WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Jan Cerny Case No. D2010-0707 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Corporate Brand Services AB, Sweden.
The Respondent is Jan Cerny of Czech Republic. 2. The Domain Names and Registrar
The disputed domain names and are registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 5, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 9, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on May 25, 2010. On May 26, 2010, the Center invited the parties to comment on the language of proceedings in both Slovak and English. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Center verified that the Complaint together with the amendments 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 June 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2010.
The Center appointed Ladislav Jakl as the sole panelist in this matter on June 29, 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.
As the language of the proceedings, the Center invited the parties to comment on the language of proceedings. The Respondent did not comment this question by the specified due date. The Complainant requests the Panel to decide the language of proceedings in this case is English. According to paragraph 11 (a) of the Rules, the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of proceedings is English. 4. Factual Background
The Complainant asserted, and provided evidence in support of, and the Panel finds established, the following facts.
The Complainant is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brand of 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 the People's Republic of China and elsewhere. In fact, Lego opened its flagship store in China at the World Shopping Mall in Beijing in September 2007. This is just a month prior to the LEGO trademark registration took place. Mr. Knudstorp, who is the president of Lego, expects that Lego will be the market leader by 2020. Lego has been present in China for 15 years. Complainant and its licensees (collectively “the Lego Group of Companies or the Lego Group”), through their predecessors, commenced use of the LEGO mark in the United States of America during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the Lego Group in 2008, was more than USD1.8 billion. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in China. The Complainant is also the owner of more than 1,000 domain names containing the term “lego”. It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.
The trademark LEGO is among the best-known trademarks in 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. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, is a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. The Lego Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Lego Group also maintains an extensive website under the domain name .
The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys. By the way the LEGO trademark is registered as Community Trademark – CTM No. 39800, application date April 1, 1996, Nice Classification 3,9,14,16,20,24,25,28,38,41and 42.
The disputed domain names and were registered on January 4 and 13, 2010. 5. Parties' Contentions A. Complainant
The Complainant states that the dominant parts of disputed domain names and comprise the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. The addition of the suffixes “preschool” and “parkstadstadion” are not relevant and will not have any impact on the overall impression of the dominant part of the name LEGO, instantly recognizable as a world famous trademark. As the Complainant and its trademark is widely known for conducting business with bricks sold in sets, said suffixes are rather fitted to strengthen the impression that the disputed domain names belong to, or are affiliated with the Complainant. As well the addition of the top-level domain “com” does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the trademark LEGO and the disputed domain names.
As to legitimate interests, in respect of the disputed domain names, the Complainant contends that the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. 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 legitimate rights in the names. Consequently the Respondent may not claim any rights established by common usage. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark LEGO. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant, despite the text found on the webpage.
Furthermore the Complainant contends that the Respondent is today not using the disputed domain names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain names based on a registered trademark in order to generate traffic to websites that contain sponsored links. By doing this, the Respondent is using the LEGO trademark and 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 world famous LEGO trademark.
As to bad faith, the Complainant says that the trademark LEGO, in respect of toys belonging to the Complainant, has the status of well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the trademark LEGO is considered, in the whole Community in general, to be significant and substantial. Furthermore the Complainant introduces that it first tried to contact the Respondent on April 8, 2010 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain names violated the Complainant's rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received so a reminder was uploaded on April 28, 2010. The Respondent did not reply on this message either. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
The Complainant further argues that the Respondent is using disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant´s trademark as to the source, sponsorship, affiliation or endorsement of its websites. 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. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain names the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain names in bad faith.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are 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 in respect of the disputed domain names; and
(iii) the disputed domain names has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Complainant states that disputed domain names and are confusingly similar to the Complainant's trademark LEGO, seeing that it incorporates this trademark in its entirety and that the addition of the suffixes “preschool” and “parkstadstadion” , as well as the addition of the top-level domain “com” do not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity between the trademark LEGO and the disputed domain names.
Therefore the Complainant contends that the disputed domain names are confusingly similar to the trademark of the Complainant.
The Panel goes out from the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain names and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. There is no doubt that the disputed domain names and incorporate the trademark LEGO as a part of it.
The words “preschool” and “parkstadstadion” are common, generic terms that do not give any distinctiveness to the diputed domain names. Mere addition of a descriptive terms by way of prefix to a complainant's mark does not adequately distinguish the disputed domain names from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBCHoldings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717.
As well the inclusion of the gTLD suffix “.com” does not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
Accordingly, by registering the disputed domain names, the Respondent created a likelihood of confusion with the Complainant's trademark LEGO. Moreover, it is likely that disputed domain names could mislead Internet users in thinking this is in some way associated with the Complainant.
For all the above cited reasons, the Panel concludes that disputed domain names are identical or confusingly similar to the Complainant's trademark in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant contends that it has exclusive rights for LEGO and no licence /permission/ authorization respectively consent was granted to use LEGO in the disputed domain names of the Respondent. Furthermore, it is obvious that the Respondent uses disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark LEGO. These domain names in question clearly allude to the Complainant. The Complainant argues that there is no reason why the Respondent should have any right or interest in disputed domain names.
Based on the Complaint, the Panel finds that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's trademark or to seek registration of any domain name incorporating said trademarks.
The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. The Panel notes that the submitted use of the disputed domain names is to display a parking-site on which click-through-advertisements appear. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant's trademark LEGO at the time it registered the disputed domain names. Due to the fact that the disputed domain names direct Internet users to a web page relating to the Complainant's business and history, the Respondent cannot have ignored the Complainant's business reputation at the time of registration of these domain names.
The disputed domain names used by the Respondent suggest that it is aware of the Complainant and that the Respondent's use of the disputed domain names will cause consumers to believe that the domain names are affiliated with or owned by the Complainant.
The Panel further finds that by using the Complainant's trademark to draw Internet users to a site offering what appears to be competing or at least related goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658.
For the above cited reasons the Panel finds that the disputed domains names were registered and being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 disputed domain names and be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Dated: July 10, 2010
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