WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Mike Morgan Case No. D2009-0438 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Mike Morgan of Mt Pearl, Newfoundland, Canada. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Spot Domain LLC dba D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2009. On April 3, 2009, the Center transmitted by email to Spot Domain LLC dba D a request for registrar verification in connection with the disputed Domain Name. On April 3, 2009, Spot Domain LLC dba D 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 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 April 7, 2009 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 April 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 6, 2009.
The Center appointed Dietrich Beier as the sole panelist in this matter on May 15, 2009. 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 numerous trademarks for LEGO worldwide including Germany and Canada to name only a few, for example, DD 653725 LEGO applied for goods and services in classes 16, 25, 28, 41, 9 on August 21, 1990 in Germany and TMA106457 applied for on June 14, 1956 inter alia for toys in Canada, and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products.
The Complainant is also the owner of more than 450 domain names containing the term LEGO.
The trademark LEGO has been used and is known around 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.
Several sources such as the book “The World's Greatest Brands” published by MacMillan Business in 1996 or the book “Famous Brands” published by Markgraaf BV in 1985 consider the LEGO mark as one of the most famous trademarks and brands in the world.
The Domain Name was registered by the Respondent in the year 2008 and is used at the moment for a portal with sponsored links.
The Complainant first tried to contact the Respondent by its address data in the WhoIs in relation to the domain name , on November 18, 2008 through a cease and desist letter. No reply was received to reminders of November 26, 2008 and December 5, 2008. The Complainant requested immediate transfer of the Domain Name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). 5. Parties' Contentions A. Complainant
The Complainant claims inter alia that the dominant part of the domain name comprises the word “lego”, which is identical to the registered trademark LEGO. The Domain Name is confusingly similar to the Complainant's mark LEGO. The suffix “universe” has no impact on the overall impression of the marks and does accordingly not detract from the overall impression. The Domain Name must therefore be considered to be confusingly similar with the Complainant's trademark.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using “Lego” in any other way that would give them any rights or legitimate interests in the Domain Name. Consequently the Respondent may not claim any rights established by common usage.
Furthermore, no license or authorization has been given by the Complainant to the Respondent to use the trademark LEGO.
The Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to the website and through this, seeks to generate income through sponsored links. By doing this, Respondent is misleading Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name “Lego”. The Respondent is trying to sponge off the Complainant's famous trademark.
The trademark LEGO belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from this page himself. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for LEGO in several classes.
The Domain Name is confusingly similar to the LEGO mark of the Complainant since the plural form of “Lego” as well as the element “universe” being a non distinctive word cannot be considered as relevant to influence the overall impression of the domain name (see for the comparable word “world” Harrods Limited v. Lawrence Colbert, WIPO Case No. D2008-1836 and Tiffany (NJ) LLC, Tiffany and Company v. Thomas Stanek, WIPO Case No. D2009-0143).
The Panel therefore considers the Domain Name to be confusingly similar to the trademarks LEGO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no rights in the Domain Name since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no legitimate interest in the Domain Name since there is no indication that the Respondent is commonly known by the name “LEGO” nor that the Respondent is using the Domain Name in connection with a bona fide offering of related goods or services. For the latter, as the panel in Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695 stated correctly it must be noted that the use of a domain name confusingly similar to complainant's trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use. Also a noncommercial or fair use is not noticeable.
The Panel therefore finds that the respondent does not have rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Due to the nature of the LEGO mark as well-known, if not famous, the Respondent must have been well aware of the Complainant and its trademarks when registering the Domain Name. The Complainant had not authorized the Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular domain name without the Complainant's authorization.
Furthermore, by combining the suffix “universe” and a well-known trademark in its plural form, it is evident to the Panel, that the Respondent has registered the Domain Name in bad faith.
In sum, the circumstances of this case clearly indicate that the Respondent registered the Domain Name primarily with the intention of attempting to attract, for commercial gain, Internet users to a potential website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location.
The Panel therefore considers the Domain Name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 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.
Dietrich Beier
Sole Panelist
Dated: May 29, 2009
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