WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. H, Heihachi Ltd WHOIS-PROTECTION Case No. D2010-0821 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is H, Heihachi Ltd WHOIS-PROTECTION of Marbella, Bella Vista, Panama. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On May 21, 2010, eNom, Inc. 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 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 William F. “Bill” Hamilton as the sole panelist in this matter on June 23, 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 LEGO mark is one of the world's leading brands and is registered with numerous national authorities around the world. The Complainant commenced the use of the LEGO mark in the United States in 1953. The Complainant owns over a thousand domain names which incorporate the LEGO mark. LEGO branded products are sold in more than 130 countries around the world. The LEGO mark can be characterized as a “Superbrand”, that is one of the best known retail brands in its class in the world (see in this regard the official top 500 Superbrands for 2009/10, provided by Superbrands UK). The disputed domain names were registered by the Respondent on February 13, 2010.
The Respondent did not reply to the Complainant's demand to cease the use of the disputed domain names. 5. Parties' Contentions A. Complainant
The Complainant contends the disputed domain names are confusingly similar to its LEGO mark because the Complainant's entire LEGO mark is utilized in the disputed domain names. Moreover, according to the Complainant, the inclusion of the suffixes “mit-paysafe” (which means “with-paysafe” in German) and “versand24” (which means “shipping24” in German) in the disputed domain names increases the likelihood of confusion. The Complainant further asserts that the Respondent has no rights or legitimate interest in the disputed domain names. The Complainant asserts that the Respondent has no bona fide business interest in the disputed domain names, and that the Complainant has not licensed the Respondent in any manner to use the LEGO mark or the disputed domain names. Finally, the Complainant asserts that the disputed domain names were registered and are being used in bad faith to attract unsuspecting Internet users to the Respondent's landing page only to be redirected to other websites offering a variety of consumer products for sale. The Complainant asserts the disputed domain name was actually used to fraudulent entice commercial payments from unsuspecting consumers. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy establishes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The respondent's domain name is 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 domain name; and
(iii) The respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant the Panel ordering the remedy requested. A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant's well-recognized and well-known LEGO mark. The disputed domain names incorporate the Complainant's renowned LEGO mark entirely. The mere addition of generic words such as the suffixes “mit-paysafe” and “versand24” does not dispel the confusing similarity caused by the wholesale adoption into the disputed domain names of the Complainant's LEGO mark. It has been long-established that confusing similarity generally occurs when well-known trademarks are paired with generic prefixes and suffixes. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. Case No. D2004-0488; AmerCable Incorporated v. Edward Van Rossum,WIPO Case No. D2009-1292. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent has never been licensed or authorized by the Complainant to use the LEGO mark or the disputed domain names. Moreover, it does not appear that the Respondent is commonly known by the disputed domain names or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Respondent has failed to come forth with any demonstration of rights or legitimate interests in the disputed domain names. The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain names. Audi AG v. Dr. Alireza Fahimipour,WIPO Case No. DIR2006-0003. C. Registered and Used in Bad Faith
The LEGO mark is well-known throughout the world. The fame of the mark has been confirmed in numerous previous UDRP decisions. See e.g. Juris A/S v. Level 5 Corp,WIPO Case No. D2008-1692; LEGO Juris A/S, v. Anton -,WIPO Case No. D2010-0237. It is inconceivable that the Respondent was unaware of the LEGO mark when registering the disputed domain names in 2010. A simple Google search of “lego” would have produced hundreds, if not thousands, of “hits”. Indeed, the disputed domain names suggest to common sense that they were chosen to lure Internet users to a website selling LEGO branded products at a discount. Indeed, the Complainant contends that the disputed domain name was utilized for fraudulent “sales” and shut down by its ISP for such conduct. Clearly such fraudulent registration and use violates the Policy. The suffix “mit-paysafe” suggests a similar fraudulent motive. 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.
William F. Hamilton
Sole Panelist
Dated: July 5, 2010
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