WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Ranan Lachman

Case No. D2013-0915

1. The Parties

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

The Respondent is Ranan Lachman of New York, New York, United States of America.

2. The Domain Names and Registrar

The disputed domain names <citylego.biz>, <legoduplo.biz> and <ninjagolego.biz> are registered with GoDaddy.com, LLC (the “Registrar”). Hereinafter, “the disputed domain names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 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 May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.

The Center appointed Keita Sato as the sole panelist in this matter on July 4, 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, LEGO Juris A/S, is a limited company incorporated in Billund, Denmark. The Complainant has registered trademarks in many countries, such as the LEGO word mark, which was registered for class 28 in Denmark on May 1, 1954 with registration number 604-1954, also in the United States of America on August 26, 1975 with registration number 1018875, and so on. The Complainant also owns the registered trademark DUPLO as a word mark with the principal register of the United States Patent and Trademark Office (USPTO) registered on September 14, 1982, with registration number 1208662.

The Respondent is Ranan Lachman, with an address in New York, New York, United States of America.

The disputed domain names were registered on December 6, 2012 through the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has registered the LEGO trademark in many countries and over 1,000 domain names containing the term “LEGO”. 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, since it sells products in more than 130 countries, 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 furthermore alleges that the LEGO brand is ranked as number 31 of Superbrands’ official top 500 Superbrands for 2012. The Complainant states that the disputed domain names are confusingly similar to the Complainant’s world-famous trademark LEGO, since the addition of the suffixes “city”, “duplo” and “ninjago” are not relevant and will not have any impact on the overall impression of the dominant part, which is LEGO.

The Complainant also states that no license or authorization to use the trademark LEGO has been given to the Respondent. Therefore, the Complainant insists that the Respondent has no rights and no legitimate interests in the disputed domain names.

Further, the Complainant states that the Respondent registered and used the disputed domain names 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, and by using the disputed domain names the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.

For these reasons, the Complainant requests transfer of the disputed domain names to the Complainant as a remedy.

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 names be cancelled or transferred:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has registered trademarks for LEGO, as explained Section 4 above. Although the
second-level portions of the disputed domain names, namely “citylego”, “legoduplo” or “ninjagolego”, and the trademark LEGO registered by the Complainant are not identical, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark. The reason is:

Prior UDRP panels have found that typically only the second-level portion of the disputed domain name is relevant for the purpose of examining identity or confusing similarity. The Panel will therefore examine in this present case as follows; (a) “city” and “lego” in the first disputed domain name, (b) “duplo” and “lego” in the second disputed domain name, (c) “ninjago” and “lego” in the third disputed domain name.

(a) <citylego.biz>

The word “city” is an ordinary descriptive word. A prior UDRP panel decided in Lilly ICOS LLC v. Anwarul Alam /”- -”, WIPO Case No. D2004-0793 (regarding the domain name <cialiscity.com>), “The disputed domain name is confusingly similar to the distinctive mark as it incorporates the mark in its entirety. Respondent’s addition of the descriptive word “city” to the disputed domain name does not eliminate the confusing similarity, because the additional word does not distinguish the owner of the disputed domain names from the owner of the mark. To the contrary, the added word “city”, elusive of the location, refers back to CIALIS by suggesting an association with the owner of the mark, and thus reinforces the disputed domain name’s confusing similarity to the mark.” (see also, F. Hoffman-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694).

This Panel follows the decision Lilly ICOS LLC v. Anwarul Alam /”- -”, supra, since the structure of the disputed domain name, namely the trademarked word “lego” plus the descriptive word “city”, is similar. The Panel furthermore notes that the Complainant released numerous products and building sets under the name “LEGO city”, based on city life, with the models depicting city and emergency services (such as police and fire), airport, train, construction and civilian services¹, although the Complainant states nothing about it in the Complaint. This fact also adds to the likeliness of consumer confusion.

(b) <legoduplo.biz>

The word “duplo” is a distinctive word in the Panel’s opinion, since the Complainant registered it with the principal register of the USPTO, as explained above. A prior UDRP panel found in LEGO Juris A/S v. Private, Registration / Dohe Dot, WIPO Case No. D2009-0753 (inter alia <legoduplostore.info>), “The use of the LEGO trademark in connection with other words does not make the disputed domain names distinctive from the Complainant's trademark LEGO. In particular, the words associated with the Complainant’s trademark in the disputed domain names are descriptive of different LEGO branded construction toys, the fact of which is likely to produce more confusion as an obvious association with the Complainant trademark.” This Panel also follows the aforementioned decision for the purpose of the first requisite element of the Policy, although said decision did not suggest the word “duplo” is registered as a trademark by the Complainant. In this case, the Panel points out that two words constituting the second-level portion of the disputed domain name <legoduplo.biz> are both registered as trademarks by the Complainant. This is another factor which adds to the likeliness of consumer confusion.

The words “lego” and “ninjago” (or “ninja” and “go” separately) are relevant in this disputed domain name for the test of identity or confusing similarity. It is true that “ninjago” is not a descriptive term, but the fame of the LEGO trademark leads this Panel’s to conclude that addition of the term “ninjago” to the Complainant’s trademark does not mitigate the confusingly similarity between the disputed domain name <legoninjago.biz> and the Complainant’s trademark.

In summary, the Panel concludes that all three disputed domain names are confusingly similar to the Complainant’s registered trademark.

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

B. Rights or Legitimate Interests

As the Complainant argues, the Complainant has never given permission or authorization to the Respondent to use the trademark LEGO, since the Complainant follows a strict policy that all domain names relating to LEGO be registered only by the Complainant. The Complainant furthermore contends that the Respondent is not using, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, and that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. The Complainant has therefore made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent uses two of the disputed domain names for parking pages with sponsored links, while one of the disputed domain names doesn’t resolve to any active website. Such use cannot be considered a bona fide offering of goods or services. The Panel further notes that prior UDRP panels have recognized that the respondent may have, for the purpose of paragraph 4(a)(ii) of the Policy, a legitimate interest in the domain name even if the respondent has not been authorized to use trademark in the domain name (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). However, the Respondent did not argue on this point, since the Respondent failed to submit a Response. The Panel could also not find any indications that the Respondent’s use would fall within the Oki Data principles, or would otherwise give rise to rights or legitimate interests in the disputed domain names.

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

C. Registered and Used in Bad Faith

First, the Panel analyzes whether the Respondent registered the disputed domain names in bad faith. As the Complainant stated, the LEGO mark has been registered by the Complainant long before the date of registration of the disputed domain names. The trademark registrations cover many countries, including the United States of America which is the location of the Respondent. The fame of the LEGO trademark has furthermore been confirmed in numerous previous UDRP decisions (see, e.g., LEGO Juris A/S v. Wioletta Balcerak, WIPO Case No. D2011-1320). Under these circumstances, the Respondent knew or should have known about the existence of the LEGO trademark. The Panel thus concludes that the Respondent has registered the disputed domain names in bad faith.

Secondly, the Panel also finds that the Respondent uses the disputed domain names in bad faith. The Respondent uses the disputed domain names <legoduplo.biz> and <legoninjago.biz> for a domain name parking site with sponsored links (Annex 11 to the Complaint). Furthermore, there is a link on the first page of the parking site, which says “Would you like to buy this domain?”. The Panel finds that this evidence shows the Respondent’s bad faith use. In the UDRP decision Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, the panel stated “It is not reasonably tenable that the Respondent has gone to the trouble and expense of purchasing and registering the disputed domain name and having it hosted as a parking page website, with advertising links, without purpose. The ultimate purpose may be the sale of the disputed domain name, however it is not necessary for the Panel to know since it is a reasonable presumption that in the short term the disputed domain name generates revenue from click-through referrals.” The same reasoning applies to the disputed domain names <legoduplo.biz> and <legoninjago.biz> in this Panel’s view. While the disputed domain name <citylego.biz> is not used for a parking page, the facts of this case show that the three disputed domain names were registered on the same day, and two of these domain names are used in bad faith, which leads to a pattern of conduct which is an example of bad faith registration and use listed in paragraph 4(b)(ii) of the Policy. The Panel thus concludes the Respondent also uses the disputed domain names in bad faith.

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

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 names <citylego.biz>, <legoduplo.biz> and <ninjagolego.biz> be transferred to the Complainant.

Keita Sato
Sole Panelist
Date: August 29, 2013

¹ The official site of the Complainant has contents on the LEGO City line products. See, http://city.lego.com/en-us/?icmp=COUSFR2City, which was independently accessed by the Panel on July 17, 2013.