WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Internet Division of ALICOM Swiss

Case No. D2013-0986

1. The Parties

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

The Respondent is Internet Division of ALICOM Swissof Coldrerio, Ticino, Switzerland, represented by Federico Magistretti ALICOM Swiss .

2. The Domain Name and Registrar

The disputed domain name <legoworld.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2013, the Registrar 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 June 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2013. The Response was filed with the Center on June 24, 2013.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on July 10, 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.

4. Factual Background

The Complainant is the registered owner of the trademark LEGO in numerous countries. A list of the LEGO trademark registrations of the Complainant is attached to the Complaint.

The disputed domain name was registered on February 24, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant is the registered owner of the LEGO trademarks, and also of over 2400 domain names incorporating the mark LEGO. The Complainant and its licensees (collectively “the LEGO Group commenced use of the LEGO mark in the United States of America during 1953 (through its predestors), to identify construction toys made and sold by them. The revenues of the LEGO Group in 2009 amounted to more than USD2,8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Switzerland. The Complainant contends that the LEGO trademark is among the most well-known in the world. The use of the trademark has been expanded from toys to now also include computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant contends that the inherent and acquired distinctiveness of the LEGO trademark, and its status of well-known mark, provides it with the right to prevent any use of the trademark or a confusingly similar denomination in connection with any products or services.

The Complainant asserts that the disputed domain name incorporates the Complainant’s trademark LEGO in its entirety and that it is confusingly similar to its famous LEGO trademark, whose status as a well-known mark has been confirmed in a number of Panel decisions. Where such a mark is incorporated into a disputed domain name in its entirety the Complainant contends that a finding of confusing similarity is unavoidable. In this case the disputed domain name includes also the generic term “world”. The Complainant asserts that any person seeing the disputed domain name is bound to mistake it for a name associated with the Complainant. The risk is said to be considerable that the trade public will perceive the disputed domain name as owned by the Complainant or that some kind of commercial relationship exists with the Complainant. The Complainant asserts that by using the trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the LEGO trademark.

The Complainant asserts that it has not found that the Respondent has any registered trademark or tradename that corresponds with the disputed domain name, nor has the Respondent been granted any license or authorization to use the trademark LEGO. The Respondent is not an authorized dealer nor has it ever had a business relationship with the Complainant, a factor indicating the absence of rights or legitimate interests in a disputed domain name according to previous Panel decisions.

The Complainant contends that the mere registration of a domain name does not vest rights or legitimate interests in it. Further, the Respondent is said not to be using the Domain Name in connection with a bona fide offering of goods or services. Rather, the Respondent has intentionally chosen a domain name incorporating a registered trademark in order to generate traffic to its site which is currently “under construction”.

The Complainant asserts that the considerable reputation and goodwill that attaches to its LEGO trademark has induced numerous unauthorized third party domain name registrations that it has successfully contested. In this particular case the Complainant contacted the Respondent requesting immediate transfer and offering to compensate the Respondent for expenses of registration and renewal fees not exceeding out of pocket expenses. The Respondent’s representative replied that the disputed domain name had just been registered for an Italian client, explaining that the word actually meant “The World of the Ego”. The Complainant did not accept this explanation and advised that the Complainant had previously registered <legoworld.com> and that it was unusual that the Respondent would choose “.net” as their first choice. The Respondent replied and disagreed and stated that the client had investigated the domain names <egoworld.com> and <egoworld.net> but found them already “busy”, as was the domain name <legoworld.com>. According to the Complainant this indicates that the Respondent saw that the “.com” was owned by the LEGO Group. When visiting “www.legoworld.com” the Internet user is redirected to “www.lego.com”. The Respondent further stated that he would ask if his customer would be interested in selling the disputed domain name. He replied back asking the Complainant to put forward an offer, and the Complainant advised that they would reimburse registration fees. The representative of the Respondent stated that they had acquired the disputed domain name via backorder for EUR 900 and would be ready to part with it for this price. The Complainant asked several times for proof that the Respondent had paid EUR 900 for the disputed domain name, but no such proof was forthcoming, whereupon the Complainant advised the Respondent that without any proof the Complainant could only commit to the registration fees. Since these attempts to resolve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP proceeding.

The Complainant asserts that in correspondence the Respondent asserted that they intend to use the disputed domain name for a website called “The world of the Ego”. However, according to the Complainant no actual evidence of such legitimate use has been provided. No logo designs, or even plans for advertising campaigns or plans for market tests or any other plans for outlays or commitments of resources made before receiving notice of the dispute have been provided.

In the circumstances, the Complainant contends that passive holding of a domain name does not in itself constitute an act of bad faith, but this coupled with absence of evidence, the fact that the disputed domain name was “for sale” before the cease and desist letter was sent and the lack of any demonstrable proof of use, persuades the Complainant that the Respondent’s explanation is a fabrication. The Complainant asserts that the relevant website was changed upon receipt of the cease and desist letter from the Complainant. In all the circumstances it is evident according to the Complainant that the disputed domain name was registered with the intent to profit from Complainant’s LEGO trademark. The Complainant asserts that a simple Google search for “LEGO World” would return multiple results with association with the Complainant, and that the Complainant has also been awarded several domain names, almost identical to the disputed domain name, such as legoworld.org.

Further, the Complainant contends that the Respondent is using the disputed domain name to intentionally attempt 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 website. Given the fame of the LEGO trademark, the Complainant contends that it is highly unlikely that the Respondent was not aware of the rights of the Complainant at the time of 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. Further, the above demonstrates that the Respondent has registered and used the disputed domain name in bad faith, according to the Complainant.

B. Respondent

The authorized representative of the Respondent submitted an online Response via the Centre’s English website. According to this Response, the proper owner of the disputed domain name has been compelled to cease all work from May 2013 due to ill health and will only return to work after two months. According to the Response this was the reason why correspondence with the Complainant’s representative ceased. According to the Response the disputed domain name was purchased at auction and in good faith for the establishment of a website which is under construction, work having been temporarily interrupted for the abovementioned health reasons.

According to the Response the purchaser of the disputed domain name deals with fashion and is active in the adult fashion sector. It has no activities in the field of toys and will not deal with toys in the future. The relevant website is said not to be accessible to minors. According to the Response the name of the purchaser’s business is “ego world”, but being unable to register <egoworld.com> or <egoworld.net>, “l’egoworld” was chosen, but contracted to “Legoworld” as no apostrophe can be included in a domain name. In Italian this is said to mean “lo ego world” which is “the ego world” in English. The Response also points out that LEGO is an Italian verb. The Response asserts that the purchaser of the disputed domain name was probably not even aware of LEGO as used in <legoworld.com> (registered by the Complainant), since LEGO meant LO EGO to the Respondent. Further the Response contends that the domain name was acquired in good faith, no attempt was made to sell it to a third party, and its intended use was for a site and shop selling fashion and accessories for adults. The Response reiterates that the correspondent is not the true owner of the disputed domain name, whose identity is disguised on whois to protect privacy.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant’s LEGO trademark. However, it incorporates that trademark in its entirety as its initial and most striking part. As has been repeatedly held by other panels the addition of a generic term to a distinctive trademark is not apt to dispel a conclusion of confusing similarity. Here the contraction of the two terms suggests a place where LEGO marked products will be found available. It suggests a legitimate connection between the disputed domain name or any website to which it resolves and the Complainant. Such a connection does not in fact exist. The contraction of the two terms has no other meaning or does not constitute a known word with some different implication or explanation. In light of the reputation of the LEGO trademark and the linguistic difficulties that attend the argument proffered by the Respondent, the Panel find it unlikely that an Internet user would conclude that the disputed domain name refers to a contraction of the terms “l’ego world” or “lo ego world”.

Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark.

B. Rights or Legitimate Interests

The Respondent expresses an intention in its Response and in its correspondence with the Complainant to use the disputed domain name for a legitimate purpose associated with its alleged “l’ego world world” business. However, there is nothing before the Panel to indicate that such a business in fact exists or is genuinely intended by the Respondent. There is also no real evidence or indication before the Panel that there exists a true owner other than the party who actually entered into correspondence with the Complainant and filed the Response. ALICOM Swiss is in any case formally identified as the registrant, and it is that entity that entered into correspondence with the Complainant and also filed the Response. The existence of a true owner protected for privacy reasons is not substantiated by the material before the Panel. Furthermore, the Respondent’s explanations vary between its earlier correspondence and its later filed Response, which also refers variously to the supposed true owner of the disputed domain name as’”his” and ”her’. Aspects of the Respondent’s position in the Response filed with the Center that would logically have been raised in earlier correspondence were not, which implies that the Response is artificially constructed. Further, the Respondent never provided any proof of its actual expenses in acquiring the disputed domain name. The request for a EUR 900.00 payment for transfer was never justified or properly documented to the Complainant. The linguistic explanations for the adoption of the disputed domain name make little sense.

In the circumstances the only inference open to the Panel is that the correspondence and Response amount to little more than an unpersuasive veneer of half-truths and inventions that are intended to disguise the Respondent’s true object, which is to sell the disputed domain name to the Complainant for a profit above its legitimate expenses. At the same time, the Respondent has no authority or license from the Complainant to use its LEGO trademark or register a domain name incorporating it. The Respondent is not an authorized dealer or reseller and the evidence that the Respondent conducts a business under a name similar to “Legoworld” is unpersuasive. In the circumstances no aspect of the Respondent’s identity or activities gives rise to any indication that a legitimate interest or rights vest in it.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The LEGO trademark is distinctive and has acquired considerable goodwill in many countries around the world and in Europe, including in Switzerland. This was the case at the time of registration of the disputed domain name by the Respondent. There is no inherent reason to acquire a domain name incorporating this term other than to suggest a connection with LEGO marked goods. The Panel finds that the evidence that the Respondent conducts a legitimate business by reference to the words “L’ego world” in the area of fashion and accessories is unpersuasive, as indicated above. The website to which the disputed domain name resolves is and remains under construction and there is nothing to indicate it will be deployed in the pursuit of a legitimate business of the kind referred to in the Response.

Further the explanation advanced by the Respondent for its registration of the disputed domain name, and its demand for compensation in the amount of EUR 900 for the transfer of the disputed domain name to the Complainant amount to a thinly disguised attempt to make money out of selling the disputed domain name back to the Complainant, in circumstances where the Respondent has absolutely no rights or legitimate interests in it, as is concluded above.

Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.

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 <legoworld.net> be transferred to the Complainant.

WiIliam A. Van Caenegem
Sole Panelist
Date: July 24, 2013