WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Andrew Smith Case No. D2009-1740 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Andrew Smith of Manchester, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2009. On December 21, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C, a request for registrar verification in connection with the disputed domain name. On December 21, 2009, OnlineNic, Inc. d/b/a China-C 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 December 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2010. The Response was filed with the Center on January 19, 2010.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 27, 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.
On February 2, 2010, the Panel issued a Procedural Order seeking further submissions from the Respondent by February 5, 2010, with the right to the Complainant to file submissions strictly in reply by February 10, 2010. No submissions having been received from the Respondent in response to the Panel's invitation, the Panel accordingly indicated on February 14, 2010, that he would not wait any longer and would proceed to a decision on the basis of the documents already filed. The Respondent had been invited to provide documentation in support of the assertions made in the Response. 4. Factual Background
The Complainant manufactures construction toys and other branded LEGO products under the trademark LEGO. It owns numerous registered trademarks for LEGO and for LEGOLAND throughout the world. It operates the LEGO brand under a system of licensing whereby licensees are authorised to avail themselves of the Complainant's intellectual property rights in the United Kingdom and elsewhere. British Lego Limited was established in 1959 and the use of the LEGO mark in that country has been extensive and continuous since then.
The revenue of the LEGO group in 2008 was more than USD 1.8 billion and its products are sold in more than 130 countries, including the United Kingdom.
The Complainant is the owner of more than 1,000 domain names containing the word LEGO. Its policy is that all domain names containing the word LEGO should be owned by it.
The LEGO trademark and brand have been recognised as famous and included in the official top super brands in 2009/10 as number 8 of the most famous trademarks in the world. Numerous WIPO Panels have found that the LEGO trademark is distinctive and world-famous with a high reputation in construction toys popular with children.
The Respondent registered the disputed domain name on October 23, 2009. The Complainant gave the Respondent no authorization to use its trademark in connection with the registration of the disputed domain name.
On the Respondent's website, some LEGO information is displayed, along with sponsored links.
The Complainant sent a “cease and desist” letter to the Respondent on October 23, 2009. The Respondent replied on the same day to the effect that he was using the disputed domain name in good faith and did not wish to transfer it to the Complainant, as requested. He said that he had paid the sum of USD 4,000 for it.
There was an interchange of emails between the Respondent and a representative of the Complainant culminating in an email from the Respondent dated December 8, 2009 saying that he was trying to persuade the person from whom the disputed domain name had been purchased to take it back and return the money. The Complainant then commenced these proceedings. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to numerous trademarks in which the Complainant has rights. Various WIPO Panelists have found that the trademarks LEGO and LEGOLAND are well-recognised and distinctive.
The addition of the suffix “city” will have no impact on the overall impression of the disputed domain name in association with the name LEGO which is instantly recognizable as a famous trademark. Long-established precedent holds that “confusingly similar” is generally found when well-known trademarks are paired up with generic prefixes or suffixes.
Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. There is a risk that the public will perceive the disputed domain name as one owned by either the Complainant or someone with a commercial relationship with the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is highly unlikely the Respondent would not have known of the Complainant's rights in the word LEGO at the time of registration of the disputed domain name, given the notoriety of the name worldwide.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Instead, he is intentionally choosing a domain name based on a registered trademark in order to generate traffic to his website where some LEGO information is displayed along with sponsored links.
The disputed domain name was registered and is being used in bad faith. The Respondent must have known at the time of its registration of the substantial and worldwide reputation of the Complainant's trademarks.
The Respondent is using the disputed domain name intentionally to attempt to attract for commercial gain internet users to the website. This creates a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. At some stage after the last communication from the Complainant to the Respondent, the disputed domain name was redirected to a telecom company. B. Respondent
The Respondent purchased the disputed domain name with the specific intention of selling official LEGO products. He had written permission from the official LEGO concessionaire in the United Kingdom to sell LEGO products online and had constructed a suitable website. He was about to launch this website when contacted by the Complainant demanding the disputed domain name be handed over. This, he refused to do because he had purchased the disputed domain name in good faith and was intending to sell only official LEGO products. “We are already selling LEGO products through several retail outlets and are fully authorised to do so”. The Respondent does not intend to infringe on LEGO's intellectual property rights and only seeks to promote LEGO products. 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 a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is confusingly similar to the Complainant's well-known LEGO trademark. The addition of a generic suffix is not sufficient. The whole thrust of the disputed domain name is on the word LEGO which can only refer to the Complainant's trademark.
Accordingly, paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Complainant alleges that it has never given the Respondent rights to use the disputed domain name which incorporated its trademark. In the absence of a defence under Paragraph 4(c) of the Policy, that fact is usually sufficient to satisfy Paragraph 4(a)(ii).
The Respondent might have had open to him the defence under Paragraph 4(c)(i) of the Policy that before notice of the dispute he had used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The onus of proof is on the Respondent.
Because the Respondent offered no proof of the assertions contained in the Response and summarised above, the Panel invited the Respondent to provide documentary proof of those assertions. Having chosen not to avail himself of the opportunity offered by the Panel, the Panel has to proceed on the basis that there is no documentary proof that the Respondent might come within the provisions of Paragraph 4(c)(i).
Consequently, the Panel finds that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Having found that the Respondent has no rights or legitimate interest in the disputed domain name, in the circumstances of this case, it follows that the disputed domain name must have been registered and is being used in bad faith.
The fame of the Complainant's mark is so well-known that any registration as recently as September 2009 of a domain name incorporating that trademark must have been in bad faith.
It follows that the Respondent's continued use in the manner described must also be in bad faith. Internet users would easily think that the disputed domain name had some connection or affiliation with the Complainant.
Consequently, the Complainant has satisfied Paragraph 4(a)(iii) of the Policy and the Complaint succeeds. 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.
Sir Ian Barker
Sole Panelist
Date: February 19, 2010
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