WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Andre Lubrich Case No. D2009-1287 1. The Parties
The Complainant is LEGO Juris A/S of Denmark, represented by Melbourne IT DBS Inc. of Sweden.
The Respondent is Andre Lubrich of Germany, represented by Springer Speidel & Manning of Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2009. On September 30, 2009, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain name. On October 1, 2009, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 1, 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 October 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2009.
The Center received a fax from the Respondent's representative on October 23, 2009, expressing the Respondent's willingness to transfer the disputed domain name. The Complainant filed a request for suspension of the proceedings on October 26, 2009. On the same day, the Center confirmed that the proceedings would be suspended until November 27, 2009. Upon request of the Complainant of November 26, 2009, the proceedings were suspended further until December 28, 2009. The proceedings were subsequently reinstituted on December 29, 2009.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on January 12, 2010. 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 and various other trademarks used in connection with the LEGO brand for construction toys and other LEGO branded products.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in Germany where the Respondent is domiciled and elsewhere.
The Complainant established a sales company in Germany in 1956 and started to sell products in Germany in 1959. When the Complainant introduced a new retail concept worldwide in 2002 with LEGO Brand Store, the first one opened in Cologne. The same year LEGOLAND Germany opened. Today Lego has five stores in Germany.
The revenue for the Lego Group in 2008 was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries.
The Complainant is also the owner of more than 1'000 domain names containing the term “lego”.
The trademark LEGO is among the best-known trademarks in the world. Evidence presented by the Complainant shows LEGO as number 8 of the most famous trademarks and brands in the world. 5. Parties' Contentions A. Complainant
The dominant part of the disputed domain name comprises the word “lego”, which is identical to the Complainant's registered trademark LEGO.
The fame of the LEGO trademark has been confirmed in numerous previous UDRP decisions.
By using the disputed domain name, the Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for the Complainant's trademarks.
The Respondent does not own any registered trademark or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using the name “Lego” in any other way that would give him any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
It is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name “Lego” at the time of the registration.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website. B. Respondent
The Respondent has not replied to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's famous LEGO trademark. The Respondent's addition of the term “store” is insufficient to distinguish the disputed domain name from relevant LEGO trademarks. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The disputed domain name was once connected to a website for the online sale of Lego products managed by the Respondent and presently leads to a default page. The Complainant submits it has not authorized the Respondent to use its name or trademark, nor is the Respondent an authorized reseller of the Complainant's products. The Panel notes that the Respondent has used without the Complainant's authorization the LEGO logo on the website with the disputed domain name, suggesting visitors to this website to believe that the website is somehow related to the Complainant when in reality it is not.
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain name at issue.
The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was once connected to a website for the online sale of LEGO products managed by the Respondent and presently leads to a default page.
It is evident that the Respondent's only purpose in registering the disputed domain name was to divert traffic away from the Complainant's websites to his own website for commercial gain, and by confusing consumers into believing that the Respondent's site is sponsored, endorsed, or otherwise approved of or authorized by the Complainant. Such activity falls squarely within the terms of paragraph 4(b)(iv) of the Policy.
It may also be concluded that the Respondent knew of the existence of the Complainant's trademark and its significance in the German market when the disputed domain name was registered in June 14, 2007.
The Panel further finds that the Respondent's conduct prior to commencement of the UDRP proceedings and during the proceedings suggests bad faith.
Under the circumstances, the Panel finds that the Respondent's conduct constitutes bad faith registration and use, thus fulfilling 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.
Tobias Zuberbühler
Sole Panelist
Dated: January 22, 2009
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