WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lego Juris A/S v. 2T-Company Case No. D2010-0363 1. The Parties
1.1 The Complainant is Lego Juris A/S of Billund, of Denmark; (the “Complainant”) represented by Melbourne IT Digital Brand Services AB, Sweden.
1.2 The Respondent is 2T-Company of Den Bosch the Netherlands (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “disputed Domain Name”) is registered with Network Solutions, LLC. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2010. On March 10, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed Domain Name. On March 10, 2010, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 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 March 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2010.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on April 13, 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
4.1 The Complainant LEGO Juris A/S is a limited company incorporated in Denmark and together with other companies in the LEGO Group of Companies, own the trademark LEGO in countries all around the world. The Complainant also own all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. The Complainant has had extensive, exclusive and continuous use of the LEGO trademark since 1953 and is also the owner of 1000 domain names containing the mark, LEGO.
4.2 The Respondent is based in the Netherlands, and according to the public InterNIC database the disputed Domain name registration was created on August 12, 2006. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the disputed Domain Name is confusingly similar to the Complainant's registered trademark LEGO. The Complainant asserts that the dominant part of the disputed Domain Name is also identical to the trademark LEGO, and therefore anyone who sees the disputed Domain Name is bound to mistake it for a name related to the Complainant. The Complainant argues that both the addition of the prefix “shop4” and the top-level domain “COM” to the disputed Domain Name do not have any impact on the overall impression of the dominant part of the name, LEGO being instantly recognizable as a widely-known trademark.
5.2 Furthermore, the Complainant contends that there is considerable risk that the public will perceive the disputed Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relationship existing between the Complainant and the Respondent.
5.3 The Complainant relies on previous UDRP decisions such as LEGO Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692 and LEGO Juris A/S v. Michael Longo,WIPO Case No. D2008-1715 to assert that the LEGO trademark is well recognized, distinctive and known worldwide.
5.4 The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in that it is clear that no license or authorization of any kind has been granted the Respondent by the Complainant to use the trademark LEGO. The Complainant also submits that although the Respondent appears to be a customer of the Complainant, since the Complainant's goods appear to be offered for sale on the Respondent's website, the Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods and services because: (i) the Respondent has not disclosed accurately the exact relationship between the Respondent and the Complainant, the trademark owner; and (ii) the Respondent is offering for sale other competitors' products on its website contrary to the requirements as discussed in previous UDRP cases. See, inter alia, Oki Data Americas Inc v. ASD, IncWIPO Case No. D2001-0903.
5.5 Furthermore the Complainant asserts that the Respondent has deliberately chosen the disputed Domain Name based on the Complainant's registered trademark in order to generate traffic to the Respondent's website which looks like the Complainant's official website and at the same time offering other competitors' products on the website. The Complainant states that the Respondent has been repeatedly warned of the likelihood of Internet visitors being confused into thinking that the Respondent's website is sponsored by the Complainant.
5.6 With regards to registration and use in bad faith the Complainant submits that the considerable value and goodwill of the mark LEGO throughout the whole community and throughout the world is largely what induced the Respondent to register the disputed Domain Name. The Complainant further alleges that the Respondent has owned the Domain Name since August 2006.
5.7 The Complainant states that a cease and desist letter was first sent to the Respondent on October 30, 2006 demanding that the Respondent transfer the disputed Domain Name, and that the Complainant contacted the Respondent by phone thereafter. The Complainant states further that the disputed Domain Name is connected to the Respondent's 2T-Toys's website, where the Complainant's products are displayed alongside other competitors' products such as Playmobil and Disney, etc. The Respondent has also placed a LEGO logotype on top of the webpage to create the impression that the website is operated in affiliation with the Complainant. Therefore, the Complainant concludes that the Respondent was fully aware of the exclusive rights the Complainant owned in the trademark LEGO and the value of the trademark at the point of registration and must therefore be found to have registered and be using the disputed Domain Name in bad faith B. Respondent
5.8 The Respondent did not reply to the Complainant's contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default. 6. Discussion and Findings
6.1 Under paragraph 4 (a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings. A. Identical or Confusingly Similar
6.3 The Panel finds on the facts as canvassed by the Complainant and unchallenged by the Respondent that the disputed Domain Name is confusingly similar to the well known worldwide trademark owned exclusively by the Complainant. The Panel finds without any hesitation that a comparison of the Complainant's trademark with the disputed Domain Name reveals that the disputed Domain Name incorporates the Complainant's trademark, LEGO, entirely. The Panel agrees with the contention of the Complainant that the addition of the prefix “shop4” and or the top-level domain “COM” does not sufficiently distinguish the disputed Domain Name from the Complainant's trademark.
6.4 The Panel in reaching the finding above draws support from a number of decisions cited by the Complainant such as Level 5 Corp., supra and Michael Longo, supra, in which the panels confirmed the notoriety and distinctive nature of the Complainant's trademark and found that the disputed domain names in those cases, namely and infringed the Complainant's trademark despite the addition of the suffixes: “denmark” and “networks” to the disputed domain names.
6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant's trademark in accordance with paragraph 4(a)(I) of the UDRP Policy. B. Rights or Legitimate Interests
6.6 The Panel finds that the Respondent has failed to provide any evidence or circumstances as required to establish that it has rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Panel is satisfied on this element, as the Complainant contends that the Respondent cannot be said to be using the disputed Domain Name in connection with a bona fide offering of goods and services simply because the Respondent may be a customer of the Complainant and/or may be offering the Complainant's products for sale on its website. The Panel is satisfied that the Respondent has failed to adhere to the numerous requirements of bona fide offering of goods and services as enumerated in the case of Oki Data Americas, Inc., supra. Most significantly, the Respondent has failed to correctly describe on the website its relationship with the Complainant, the owner of the LEGO trademark, to prevent any confusion in the minds of Internet visitors and the Respondent evidently offers for sale on its website other competitors' products.
6.7 The Panel is satisfied that the Respondent registered the disputed Domain Name with the intention of benefiting from the worldwide reputation of the Complainant's trademark. The Panel finds that the Respondent's silence and the Respondent's failure to submit a Response to the Complainant's arguments concerning the likelihood of confusion in the minds of Internet visitors, are further proof that the Respondent's interests cannot have been legitimate at any point in time.
6.8 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy and that the Respondent has not come forward to rebut the Complainant's showing. C. Registered and Used in Bad Faith
6.9 On the issue of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith. The Panel has taken a number of factors into account in arriving at this finding. First of all, the Panel finds that the Respondent knew or ought to have known of the Complainant's worldwide exclusive rights in the trademark LEGO dating back to 1953. Second, the Panel has taken into account the fact that the Respondent failed to respond to the Complainant's cease and desist letter and failed to transfer the disputed Domain Name as apparently demanded by the Complainant by letter, email and telephone contact. Third, as earlier indicated, the Panel has and will draw adverse inferences from the failure of the Respondent to respond to communication in respect of these proceedings. Fourth, the Panel finds as a fact that the Respondent registered the disputed Domain Name with the sole aim of benefitting from the confusion likely to arise from the similarity between the Complainant's trademark and the disputed Domain Name.
6.10 Furthermore the evidence presented by the Complainant shows that the disputed Domain Name is connected to the Respondent's toys website where the Complainant's products are displayed and offered for sale alongside other competing brands such as Playmobil and Disney. The evidence also shows that there is a LEGO logotype placed on top of the Respondent's webpage, to further create the erroneous impression in the minds of Internet visitors that the website is operated in affiliation with the Complainant.
6.11 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy. 7. Decision
7.1 For all these reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name be transferred to the Complainant.
Ike Ehiribe
Sole Panelist
Dated: April 27, 2010
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