WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Maho Jakotyc Case No. D2010-0835 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Maho Jakotyc of Tirane, Albania. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. On May 25, 2010, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain names. On May 26, 2010, A, 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 June 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 1, 2010.
The Center appointed Cherise M. Valles as the sole panelist in this matter on July 1, 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, based in Denmark, is the owner of the trademark LEGO and all other trademarks associated with the LEGO brand of construction toys and other LEGO branded products. The Complainant and its licensees commenced use of the LEGO mark in the United States in 1953. In 2008, the revenues for the LEGO Group were over USD 1.8 billion. The trademark LEGO is well-known internationally. The LEGO Group owns numerous trademark registrations for the mark LEGO worldwide, including in Albania (the jurisdiction of the Respondent) with registration number 9204. The trademark LEGO is listed as number 8 out of the official top 500 Superbrands for 2009-2010 (see Annex 8 of the Complaint). The Complainant is also the owner of more than 1000 domain names containing the term LEGO as listed in Annex 7. 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 (see Annex 9 of the Complaint).
The disputed domain names , , and are registered with A, Inc.
Maho Jakoytc is the registrant of the disputed domain names. The disputed domain names were registered on the following dates:
- February 1, 2010
- February 7, 2010
- February 25, 2010
- January 28, 2010 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on May, the Complainant asserts that:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The dominant part of the disputed domain names , , and comprises the word “lego” which is identical to the trademark LEGO that has been registered by the Complainant as a trademark and a domain name in many countries (see Annex 7 of the Complaint). The Complainant is the registrant of more than a 1000 domain names incorporating the term “lego”. The Complainant asserts that the disputed domain names are“identical” and “confusingly similar” to the Complainant's trademark in the light of the fact that it incorporates its trademark in its entirety. The Respondent lacks rights or legitimate interests in the disputed domain names.
The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Complainant has not obtained any information indicating that the Respondent has been using LEGO in a manner that would give it legitimate rights to the name. The Complainant has not authorized or licensed the Respondent to use the trademark LEGO. The disputed domain names have been registered and used in bad faith.
The Complainant asserts that the disputed domain names were registered in bad faith. At the time of its registration, that is, on February 1, 2010, February 7, 2010, February 25, 2010 and January 28, 2010 the Respondent undoubtedly had knowledge of the Complainant's well-known trademark. The Complainant asserts that the disputed domain names are being used with the intention to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion with its well-known mark. Bad faith may be found where the Respondent uses the legitimate trademark of the Complainant for nefarious purposes, namely to connect to a sponsored link selling LEGO products.
The Complainant asserts that the Respondent has registered and is using the Complainant's mark in bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain names be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not file a formal reply to the Complainant's contentions. 6. Discussion and Findings
The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore, in default and the Panel shall draw such appropriate inferences therefrom. A. Identical or confusingly similar
To prove this element, the Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to the Complainant's trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark LEGO. The Complainant has submitted evidence of its trademark registrations in Annex 5 of the Complaint. It has also submitted evidence in Annex 7 of the registrations of more than a thousand domain names containing the term “lego”. The trademark LEGO is so pervasive around the world that most Internet users would associate the disputed domain names with the Complainant's trademark. The disputed domain names differ from the Complainant's trademark with the addition of the words the suffixes “clib” and “cityairport”, and the prefixes “racer” and “wwwm” are not relevant and will not have any impact on the overall impression of the dominant part of the name, “lego”, which is instantly recognizable as a world famous trademark. Thus, the disputed domain names incorporate the Complainant's mark in its entirety. It has been held in many prior UDRP panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. In Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, it was held that there is an established precedent that confusing similarity is generally acknowledged when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.
In the light of the foregoing, the Panel finds that the disputed domain names are confusingly similar to the Complainant's registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. If a prima facie case is established, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain names, most likely knew or should have known of the existence of the Complainant's well-known LEGO trademark. In the light of the widespread knowledge of LEGO mark throughout the world, in the Panel's view it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who has registered the trademark LEGO, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark LEGO in the disputed domain names. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain names. Instead the evidence suggests that the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to websites that contain sponsored links that lead to sites selling LEGO products (see Annex 10 of the Complaint). By doing this, Respondent is using the LEGO trademark and misleading Internet users to commercial websites and consequently, the Respondent is unfairly trading off of the trademark LEGO. The evidence suggests that the Respondent registered, and is using the disputed domain names, only because they are similar to the Complainant's well-known mark, and for the purposes of attracting Internet users to its site. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on its website or location.
“Lego” is a fanciful term, and not a generic or descriptive one. As the panel held in Hoffmann-LaRoche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name”. The disputed domain names are currently connected to websites containing sponsored links that lead to other sites selling inter alia, Lego products. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites. It is also irrelevant whether the Respondent is actually getting revenue from the pages himself. In Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, the Respondent claimed that he had not received any money from the website. The panel stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the Respondent himself.”
Moreover, the Respondent failed to respond to cease-and-desist letters. In News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623, the panel stated that the failure of a respondent to respond to a cease-and-desist letter, or similar attempts at contact, was relevant in a finding of bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain names under paragraph 4(a)(iii) of the Policy. 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.
Cherise M. Valles
Sole Panelist
Dated: July 15, 2010
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