WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ng Chee Kae, SGMY Capital Sdn Bhd

Case No. D2018-2602

1. The Parties

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

The Respondent is Ng Chee Kae, SGMY Capital Sdn Bhd of Johor Bahru, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <legotaxi.com> (the “Disputed Domain Name”) 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 November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 2018, 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 November 16, 2018 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 November 20, 2018.

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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on December 18, 2018. 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 company based in Billund, Denmark and is the owner of the LEGO Trademark (the “LEGO Trademark”) in respect of construction toys and other products. Among the trademark registrations throughout the world there are Malaysian Trademarks No. M/041891, registered on May 25, 1964 and covering class 28 (toys) and No. R/020590, registered on April 29, 1981 and many others, Singapore Trademark No. T6435007D, registered on May 23, 1964 and covering class 28 (toys).

The Complainant has subsidiaries and branches all over the world, and LEGO products are sold in more than 130 countries.

The LEGO Trademark is among of the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO Trademark on all products, packaging, displays, advertising, and promotional materials. Moreover, the LEGO Trademark and brand have been recognized as being famous.

The LEGO Group has expanded its use of the LEGO Trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant has also a significant online presence, operating the main domain name <lego.com>, and being the owner of close to 5,000 domain names containing the term “lego” (Annex 8 to the Complaint). It is the strict policy of the Complainant that all domain names containing the term should be owned by the Complainant.

The Disputed Domain Name was registered on April 17, 2017. When entering the Disputed Domain Name it immediately redirects to website “www.lego-taxi.com”, where it is offered the transport service in Malaysia and Singapore under the name “LegoTaxi”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its LEGO Trademark 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.

The Complainant further contends that the Disputed Domain Name is confusingly similar to its LEGO Trademark in view of the dominant part of the Disputed Domain Name comprises the term “lego”, identical to the registered LEGO Trademark by the Complainant as trademarks and domain names in numerous countries all over the world and the fame of the Complainant’s Trademark has been confirmed in numerous previous UDRP decisions. In addition to the trademark LEGO, the Disputed Domain Name also comprises the generic descriptive term “taxi”, thereby making the Disputed Domain Name confusingly similar to the Complainant’s Trademark.

The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the LEGO or LEGOLAND Trademarks and that the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name.

Also the Complainant asserts that 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 Disputed Domain Name based on the registered LEGO Trademark in order to generate traffic and income through a website offering transportation services between Singapore and various attractions in Malaysia, especially LEGOLAND theme park.

Furthermore, the Complainant alleges that the LEGO Trademark, belonging to the Complainant, has the status of a wellknown and reputed trademark in respect of toys with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the LEGO trademark in combination with other words has always been attractive to domain name infringers.

The Complainant contends that the Respondent registered the Disputed Domain Name on April 17, 2017 that is subsequent to when the Complainant registered the trademark LEGO in Malaysia. It is obvious that it is the fame of the Trademark that has motivated the Respondent to register the Disputed Domain Name. That is, the Respondent cannot claim to have been using the LEGO Trademark, without being aware of the Complainant’s rights to it.

The Complainant further contends that the Disputed Domain Name is connected to a commercial website offering transportation services between Singapore and LEGOLAND theme park in Malaysia, not related to the Complainant in any way, and no disclaimer is found on the website.

The Complainant also alleges that 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 Trademark as to the source, sponsorship, affiliation or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove each of the following elements:

(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

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

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Disputed Domain Name comprises the LEGO Trademark in its entirety, in which the Complainant has established the rights, with a combination of the dictionary word “taxi” and generic Top-Level-Domain (“gTLD”) “.com”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Difference in dictionary term “taxi” does not in any case affect the confusing similarity here between the Disputed Domain Name and the Complainant’s well-known Trademark.

In light of the foregoing, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the Respondent does not have any registered trademarks or trade names corresponding to the Disputed Domain Name and no license or authorization have been given to the Respondent by the Complainant.

The Complainant’s LEGO Trademark is definitely well-known, previous UDRP panels acknowledged the LEGO Trademark as well-known, see e.g. LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692(“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”).

The Panel finds it is clear that the Respondent is not commonly known by the Disputed Domain Name.

The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in view of the Disputed Domain Name resolves to a commercial website, where taxi services from Sinapore to LEGOLAND theme park in Malaysia are offered. However, the website under the Disputed Domain Name does not contain any information which disclose the relationship between the Complainant and the services, which are offered by the Respondent. Such commercial use by the Respondent cannot be considered as bona fide offering goods and services.

Also, in accordance with the WIPO Overview 3.0, section 2.5.1, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Therefore, the addition of the generic term “taxi” to the Complainant’s Trademark in the Disputed Domain Name also evidences that the Respondent was well aware of the LEGO Trademark at the time of registration of the Disputed Domain Name and has done so for the only purpose to create an impression that the Disputed Domain Name is connected with the well-known Complainant’s LEGO Trademark.

The Panel further notes the term “taxi”, which the Respondent added to the Disputed Domain Name, clearly gives reference to the transport service connected with the LEGO Trademark, that increases the likelihood of confusion and makes the Internet users believe that there is a strong connection between the Disputed Domain Name and the Complainant.

Furthermore, the Respondent did not respond to the Complaint and did not participate in this proceeding, consequently the Respondent has failed to demonstrate any evidence for supporting of any rights or legitimate interests in the Disputed Domain Name.

The Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a response by the Respondent, the Panel finds that the Complainant satisfied the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that all evidences and facts in this case illustrate that the Respondent was definitely aware of the Complainant’s LEGO Trademark when he registered the Disputed Domain Name. See e.g. Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (“since Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Disputed Domain Name, it was not aware that it was infringing on Complainant’s trademark rights.”). The fact of the Respondent’s awareness of the Complainant’s Trademark is also supported by the way of use of the Disputed Domain Name for a commercial website where taxi services connected with the LEGOLAND theme park are offered.

Taking into account all circumstances of this proceeding and in the absence of any explanation from the Respondent, the Panel also finds that it is obvious that the Respondent has registered and has used the Disputed Domain Name for the only purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the services offered on it. Entering the website under the Disputed Domain Name, Internet users will most likely consider that the Disputed Domain Name refers to the one of the Complainant’s website where the Complainant offers the special taxi services for its LEGOLAND theme parks.

Taking into consideration that the Complainant’s LEGO Trademark has been completely incorporated into the Disputed Domain Name and that the Respondent has tried to divert the consumers of the Complainant’s products to its website for commercial gain, the Panel finds that the Respondent has registered and has used the Disputed Domain Name in bad faith.

The Complainant indeed tried to resolve the dispute amicably, having sent a cease and desist letter with three reminders to the Respondent with notification of the unauthorized use of the LEGO Trademark within the Disputed Domain Name and proposition of pocket expenses compensation. However, the Respondent, having a real opportunity to explain or justify of his use of the Complainant’s Trademark in the Disputed Domain Name, did not respond to any of the Complainant’s letter.

In view of the foregoing, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that the Complainant has proven the third element of the Policy.

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 <legotaxi.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: December 27, 2018