WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Phoenix Productions Case No. D2010-0798 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Phoenix Productions of California, United States of America. 2. The Domain Names and Registrar
The contested Domain Names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2010. On May 19, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the contested Domain Names. On May 21, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the contested 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 25, 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 an amendment to the Complaint on May 26, 2010. 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 May 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2010.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on June 21, 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 famous trademark LEGO for construction toys and all other trademarks used in connection with it. The Complainant initiated the use of the LEGO trademark in the United States in 1953 and its products, sold continuously since then, are now sold in more than 140 countries. The Complainant is the owner of over 1,000 Domain Names containing the word “lego”. According to “Superbrands UK”, LEGO in the years 2009-2010 was the world most renowned toy brand, and number 8 in the list of the 500 most renowned brands in the world.
The Respondent has registered the contested Domain Names respectively on January 23, 2010 and on January 24, 2010. The websites are active and contain sponsored links to LEGO products for sale. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
(a) The contested Domain Names are confusingly similar to the trademarks owned by the Complainant because:
- they reproduce the words of the Complainant's trademark in its entirety;
- the addition of the word “brand” in the contested Domain Names does not detract from associating them to the trademark of the Complainant;
- the addition of the top-level domains “.com” and “.info” does not have any impact on the overall impression of the dominant portion of the Domain Names and they are therefore irrelevant to determine the confusing similarity between the trademark and Domain Names.
(b) The Respondent has no rights or legitimate interests in respect to the Domain Names because:
- the Respondent has no registered trademarks or trade names corresponding to the Domain Names;
- the Complainant has never given to the Respondent any license or authorization to use the LEGO trademark, nor is the Respondent an authorized dealer;
- it is unlikely that the Respondent was not aware of the Complainant's legal right on the LEGO brand at the time of the registration of the contested Domain Names;
- the Respondent is not using the contested Domain Names in connection with a bona fide offering of goods or services but it is instead using it to generate traffic to its websites, which contain sponsored links to LEGO items for sale.
(c) The Domain Names were registered and are being used in bad faith because:
- the trademark LEGO related to toys belonging to the Complainant has the status of a well-known trademark, with a substantial and widespread reputation throughout the whole Community and throughout the world; therefore the Respondent at the time of the registration of the contested Domain Names was surely aware of the trademark of the Complainant and in particular the Respondent could not ignore the strong notoriety and world renown of the Complainant's trademark;
- the Complainant tried to settle the matter amicably sending a cease and desist letter to the Respondent by postal mail and e-mail, without receiving any answer;
- the contested Domain Names are currently connected to web sites with sponsored links; this indicates that the Respondent is using the Domain Names at issue to intentionally attract, for commercial gain, Internet users to said websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Names and incorporate the word “lego” which constitutes the Complainant's trademark.
The only difference between the contested Domain Names and the trademark of the Complainant is the addition of the word “brand”. The addition of the mentioned word, which is a generic term, does not add a distinctive element to the contested Domain Names and does not render them dissimilar to the trademark of the Complainant. Moreover, such addition increases the likelihood of confusion between the Domain Names and the Complainant's trademark, because the term “brand” is simply strengthening the bond and relation with the LEGO trademark itself.
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established inter alia when a domain name wholly incorporates a complainant's mark and only adds a generic word along with it (see i.e.,F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694; Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy,WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC.,WIPO Case No. D2005-0526).
Additionally, the Panel does not consider, when analyzing the identity or similarity, the suffix - in this case “.com” and “.info” - because it is a necessary component of the Domain Names and does not give any distinctiveness (see i.e., Crédit Industriel et Commercial SA v. Name Privacy,WIPO Case No. D2005-0457).
Therefore the Panel finds that the Domain Names are confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant has several trademark registrations for LEGO all over the world. Therefore it has been proven that the Complainant has rights in the LEGO trademark.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests in the Domain Names, on the part of the Respondent, see paragraph 4(c) of the Policy.
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use the famous trademark LEGO, nor has the Respondent been authorized to register and use the contested Domain Names.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the contested Domain Names. C. Registered and Used in Bad Faith
The Domain Names are exploited by the Respondent to offer online LEGO products for sale or diverting traffic to sponsored links offering LEGO products for sale. The Respondent must have been aware of the existence of the LEGO mark and the related trademarks owned and used by the Complainant. Only someone who was familiar with the Complainant's mark would have registered the Domain Names inclusive of such mark.
The Panel is of the opinion that the Respondent has registered the contested Domain Names with the intent to profit from the reputation of the famous trademark of the Complainant by using said Domain Names which are confusingly similar to the Complainant's mark.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the contested Domain Names have been registered and used in bad faith. 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 Names and be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Dated: July 1, 2010
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