WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lego Juris A/S v. Synergy Management, Fred Shear
Case No. D2007-1028
1. The Parties
The Complainant is Lego Juris A/S, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is Synergy Management, Fred Shear, Los Angeles, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007. On July 17, 2007, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On July 17, 2007, R 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”), 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 July 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2007. Whilst the Respondent sent an informal communication to the Center on July 24, 2007, the Respondent did not submit any formal response to the Complaint. Accordingly, the Center notified the Respondent’s default on August 10, 2007.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on August 22, 2007. 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 owner of the trademark LEGO, which is internationally well-known for construction toys and other LEGO branded products. The trademark LEGO is registered in over 160 countries, including the United States of America. The Complainant is also the owner of over 300 domain name registrations, including the word LEGO, in particular of the domain name .
The Respondent registered on October 23, 2000 the domain name and uses it for a website, where under the name “The Play Center Authority”, amongst other products, on the home page of the website tables are offered for sale which are said to be compatible with LEGO and DUPLO (another brand of the Complainant used for construction toys of a larger format). The website contains a disclaimer, where in small letter type it is mentioned that LEGO� and DUPLO� are registered trademarks owned by KIRKBI A/S (the registered owner of the LEGO trademark in the USA, belonging to the LEGO Group of companies), and that the tables are not manufactured by the LEGO Group.
On January 4, 2007, the Complainant sent a cease and desist letter to the Respondent. Failing a response, the Complainant sent reminders on January 29, 2007 and February 9, 2007, which remained unanswered.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the LEGO Group commenced use of the LEGO trademark In the United States in 1953, to identify construction toys, and that since then the use has continued and grown extensively, the sales of LEGO construction toys in the United States alone exceeding $ 1 billion over the last 10 years. Due to these sales and advertising expenditures, exceeding $ 50 million over the past 10 years, the LEGO trademark belongs to the best-known trademarks in the United States. The Complainant submitted evidence for the LEGO trademark being one of the most well-known trademarks; the Panelist is personally aware of that fact.
The Complainant considers that the addition of the suffix “table” to its trademark in the domain name has no impact on the overall impression of the domain name. It therefore submits that (1) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not respond to the Complainant’s contentions. Instead Mr. Shear of the Respondent wrote an email communication to the Center in which he stated that the legal staff of the LEGO Group was aware of the domain name and understood that he had no plans of surrendering it.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name consists of a combination of the Complainant’s trademark LEGO with the suffix “table” (the gtld “.com” is not taken into consideration, when judging confusing similarity). As a general rule, the combination of a trademark with a generic term does not exclude confusing similarity. Particularly in the case of a well-known mark, this mark will in many instances be instantly recognized. This rule clearly also applies in the present case where the term “legotable” may easily be understood or misunderstood as being the name of a product (table) sold by the Lego Group for use in connection with the LEGO construction toys. In this connection it is important that the LEGO Group offers under its trademark LEGO not only construction toys but also other products, such as computer hardware and software, books, videos and computer controlled robotic construction sets.
In conclusion there can in the Panel’s view be no any doubt that the domain name is confusingly similar to the trademark LEGO in which the Complainant has rights.
B. Rights or Legitimate Interests
LEGO is not a common word in which the Respondent might have a legitimate user interest. On the contrary, it is the well-known trademark of the Complainant. The Respondent has no apparent connection with the Complainant who indicates that it has not consented to Respondent’s use of the trademark LEGO. Also none of the circumstances listed in the Policy to demonstrate a legitimate interest to the domain name are given. The Respondent is not called “legotable” and does not appear to use the domain name as the name of its own business; it cannot therefore have been commonly known by the domain name. The Respondent clearly makes a commercial use of the domain name; this use cannot in the circumstances be considered to be fair. The domain name is apparently used to misleadingly divert consumers to the Respondent’s website, where the Respondent offers its own goods for commercial gain, whilst the visitor of the Respondent’s website due to the domain name is expecting to find products (tables) of the LEGO Group. Even if the Respondent explains on its website that the tables offered are not made by the LEGO Group, this disclaimer does not exclude initial confusion of the visitor and cannot of itself and in the absence of other factors including for example an authorized distributorship or resale arrangement with the trademark owner make the Respondent’s use of the domain name legitimate.
In conclusion the Respondent has no right or legitimate interest in the domain name .
C. Registered and Used in Bad Faith
No doubt the Respondent knew the trademark LEGO when registering the domain name . This conclusion can be deducted from the fact that LEGO is well-known in the United States, and from the contents of the Respondent’s website, where it offers “LEGO compatible” tables.
One of the typical circumstances which the Policy lists in Paragraph 4(b)(iv) as evidence of registration and use of the domain name in bad faith is that, by using the domain name, the Respondent has intentionally attempted 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 its website or of a product on that website. The Panel finds that this condition is fulfilled in the present case.
As said before (above under paragraph 6B) visitors of the Respondent’s website will likely expect to find inter alia tables offered for sale by the LEGO Group. Consequently visitors are likely to be confused as to the source of the website. Even if visitors, having studied the contents of the website (including the disclaimer in small text), and realize that they are being offered products of the Respondent, their initial confusion has led them to visit the website of the Respondent and has diverted them from the Complainant. Furthermore, despite the disclaimer on the website, explaining that LEGO is a trademark of the LEGO Group and that the so-called LEGO� compatible tables are not manufactured by the LEGO Group, confusion is likely to remain as to possible sponsorship or endorsement of the website by the LEGO Group. Particularly in the absence of express and prominent clarification visitors are likely to believe mistakenly that the domain name and the corresponding website are in some way affiliated with the Complainant.
Despite the fact that the tables are not from the LEGO Group the Respondent uses a domain name that gives to users the impression that on the website LEGO tables are offered, and the Respondent has in its communication to the Center clearly stated that it does not intend to surrender the domain name. This indicates inter alia that the Respondent intentionally uses the domain name to attract Internet users to its website.
In conclusion the Panelist is satisfied that the Respondent has registered and is using the domain name in bad faith.
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, be transferred to the Complainant.
Gerd F. Kunze
Sole Panelist
Dated: August 31, 2007
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