WIPO Domain Name Decision D2009-0784 for legotoys.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V Case No. D2009-0784 1. The Parties

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

The Respondent is Whois Privacy Protection Service, Inc./ Stop2Shop, G V, respectively of Bellevue, Washington and of Chipley, Florida, United States of America. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2009. On June 15, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On June 15, 2009, eNom, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default July 9, 2009.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 24, 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.

A Procedural Order was issued on August 3, 2009 in order to request copies of Complainant's trademark registrations. On August 3, 2009 the Center forwarded to the Panel Complainant's reply. The Panel extended the due date for its decision accordingly. 4. Factual Background

Complainant is a Danish company best known for the manufacture of LEGO brand toys.

According to the documents submitted with the Complaint, Complainant states that it is the owner of the following trademarks:

- United States Trademark LEGO, No. 1018875 registered on August 26, 1975 and covering goods in class 28;

- United States Trademark LEGO, No. 2245652 registered on May 18, 1999 and covering goods in class 28.

On April 3, 2009 Complainant sent a cease-and-desist letter which remained unanswered despite two reminders.

The disputed domain name was registered on June 27, 2003, with eNom, Inc., and is currently being held by the Respondent.

Respondent has used the disputed domain name to resolve to a parking page mostly displaying commercial links in the field of toys and games. 5. Parties' Contentions A. Complainant

Complainant has put forth the following legal and factual contentions.

The disputed domain name incorporates Complainant's trademark in its entirety in association with the suffix “toys”.

The word “toys” could directly be related to its products and therefore could not sufficiently distinguish the domain name from the trademark.

Complainant points out that the use of the trademark LEGO started in 1953 in the United States, where Respondent is located, to identify construction toys made and sold by them. The use of its trademark has been extensive and continuous since then.

Complainant also highlights that it owns more than 450 domain names containing the term LEGO and that it has a very strict policy according to which all domain names containing its trademark should be registered.

Complainant asserts that Respondent is neither a licensee of Complainant nor is it otherwise authorized to use any of Complainant's trademarks.

The domain name directs to a parking page displaying commercial links pointing towards Complainant's products. Therefore Complainant argues that Respondent registered the disputed domain name in order to take advantage of the Complainant's trademark reputation and obtain commercial gain.

As for bad faith registration and use, according to Complainant there is no doubt that on the date of registration of the disputed domain name Respondent was aware of Complainant's trademark.

Given the content of the website, Complainant believes that it is obvious that the purpose for registering the disputed domain name was to attract Internet users by creating a likelihood of confusion due to the similarity to its trademarks to make a commercial profit. B. Respondent

Respondent did not reply to Complainant's contentions and is therefore in default. 6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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 first element which Complainant must prove is that the disputed domain name is identical or confusingly similar to Complainant's trademarks.

Complainant has submitted with the Complaint a listing of its trademarks dated January 31, 2006 but no certificate of registration or renewal was included. The Panel issued a Procedural Order to seek copies of trademark registrations at least in the United States where Respondent is located. However, Complainant resent the same document, namely a mere list of its trademarks. The list displayed numerous trademarks for which the renewal date had long past and it did not have any registration dates nor the classes in which the trademarks had been registered.

The Panel believes that such list does not constitute an appropriate proof of trademark's rights. However, in accordance with paragraph 10(a) of the Rules, the Panel considers itself competent to independently obtain additional evidence from the Internet in order to clarify this issue (see, Société des Produits Nestlé SA v. Telmex Management Services,WIPO Case No. D2002-0070). On August 5, 2009, the Panel checked the United States Patent and Trademark Office database available online to investigate whether the trademarks were still valid. The Panel found that both United States trademarks No.1018875 and No.2245652 were registered and duly renewed.

Complainant also provided the Panel with a list of its domain names. However, such list was a mere document without any proof of actual ownership. Once again, the Panel made some verification, notably on WhoIs databases and found that Complainant is indeed the owner of the domain names claimed.

A further aspect that needs to be assessed is whether there is confusing similarity between the trademark and the disputed domain name. The disputed domain name fully incorporates Complainant's trademark LEGO associated with the generic term “toys”.

In light of previous UDRP decisions, the Panel considers that the mere addition of a common English word, such as “toys”, does not alleviate the likelihood of confusion (Alstom v. FM Laughna,WIPO Case No. D2007-1736; and Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565).

All the more so given the nature of this word which can be directly linked to Complainant's trademark and products, and therefore may reinforce the likelihood of confusion in the users minds (LXR Holdco, LLC v. Much Media S.A./WHOIS Identity Shield,WIPO Case No. D2008-0958; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275 and Société Air France v. R Blue,WIPO Case No. D2005-0290).

Moreover, in previous UDRP decisions the mere incorporation of a trademark in its entirety has been found to be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. (AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 and Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253).

Another difference between the trademark LEGO and the disputed domain name is the adjunction of the gTLD “.com”. Such an adjunction is due to the current technical requirements of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant's trademark (New York Life Insurance Company v. Arunesh C. Puthiyoth,WIPO Case No. D2000-0812; Accor S.A. v. ,WIPO Case No. D2007-1257 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the trademarks LEGO owned by Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by Complainant. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel believes on the record that there is no relationship between Respondent and Complainant and that Respondent is neither a licensee of Complainant nor has the Respondent otherwise obtained an authorization to use Complainant's trademark.

Furthermore several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks a right or legitimate interest in a domain name, the burden shifts to the respondent to prove its right or legitimate interest in the domain name (see Sinbar v. Forsyte Corporation,WIPO Case No. D2008-1667; Southcorp Limited v. Frontier Direct Pty Ltd,WIPO Case No. D2004-0949 and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753).

In the present case, the Panel finds that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests with respect to the disputed domain name. The Panel's opinion is further corroborated by the lack of a Response by Respondent in these proceedings as well as the Panel's findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

Both conditions are cumulative, as stated in many decisions adopted under the Policy (Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001). Consequently, Complainant must clearly show that: (a) the domain name was registered by Respondent in bad faith and, (b) the domain name has been used by Respondent in bad faith. a. Registered in bad faith

The domain name is composed by Complainant's trademark and the mere addition of the descriptive term “toys”.

Complainant has provided evidence of the reputation of the LEGO trademark due to its longstanding and widespread use and to the relevant amount of promotional investments made on the trademark.

Moreover, the Panel believes that LEGO is a famous trademark that enjoys a worldwide reputation and this assertion has been confirmed by previous UDRP decisions (LEGO Juris A/S v. David Palmer,WIPO Case No. D2008-1826 and LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715).

In previous UDRP decisions, panels have considered that in certain circumstances when a trademark is famous, the respondent's bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088:

“Bad faith can be presumed based on the fame of Complainant's marks, such that the Respondent was aware or should have been aware of Complainant's well-known marks and claims of rights thereto”.

More particularly, previous Panelists have asserted, in relation to the LEGO trademark that

“Given the world-wide fame of Lego, it seems clear that the Respondent was aware of the Complainant and at least the goodwill in the name Lego (and perhaps also the Lego trademark), when it registered the Domain Name” (LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd,WIPO Case No. D2009-0564).

These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent. b. Used in bad faith

In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.

Respondent's domain name leads to a parking page displaying various sponsored links mostly in the field of toys and games. Complainant's products are named on the website along with competitor's products. The wording as well as the content of the disputed domain name is very likely to mislead Internet users which might believe that Respondent is somehow affiliated with Complainant and that he is legitimately authorized to sell its products online. In the Panel's opinion this clearly constitutes use in bad faith.

The fact that the disputed domain name resolves to a parking page confirms Respondent's bad faith because it links to a website selling Complainant's products but also competing ones. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610; Roust Trading Limited. v. AMG LLC,WIPO Case No. D2007-1857; Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267; and Sports Saddle, Inc. v. Johnson Enterprises,WIPO Case No. D2006-0705.

Not only does Respondent's registration divert Internet users to its site based on the goodwill of the trademark LEGO, but it also threatens to divert actual sales away from Complainant.

Moreover, the Panel found that the disputed domain name also displays links that might have a sexual content. Hence, this not only obviously tarnishes Complainant's trademark but, as children are LEGO's main target, they might come across those links and this would be unfortunate.

As it has been pointed out in previous UDRP decisions (see, Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912), it is not relevant to know whether Respondent itself derived income on a pay-per-click basis from the links displayed on the parking site to which the domain name resolved. In fact paragraph 4(b)(iv) of the Policy requires Respondent to intend to attract Internet users “for commercial gain”, but this gain does not need to be derived by Respondent itself.

As a result, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by Complainant. 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 Complainant.

Nathalie Dreyfus
Sole Panelist

Dated: August 12, 2009

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