Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondents are A Domain Privacy of Beaumaris, Victoria, Australia and Host Master, Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrars
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 February 24, 2012. On February 24, 2012, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain names. On February 28, 2012, A, Inc. 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 Complainant on February 29, 2012 providing the registrant and contact information for the two different underlying registrants disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint and to show that the two registrants are in fact one entity, or to file a separate complaint. Complainant filed an amendment to the Complaint on March 1, 2012 containing a request for the separation of the Complaint.
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 Respondent of the Complaint, and the proceedings commenced on March 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.
The Center appointed Halvor Manshaus as the sole panelist in this matter on April 18, 2012. 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
Complainant is a Danish company with its head offices in Billund, Denmark. Complainant also has several subsidiaries and branches all over the world. Complainant is one of the world’s leading developers and manufacturers of play materials, with the LEGO bricks being the company’s flagship.
Complainant was founded in 1932. Today, Complainant sells toys in over 130 countries, and the company’s brand is regarded as world famous, as shown, for instance, in the Superbrands top 500 list for 2010, in which LEGO was ranked as the eighth most famous trademark/brand in the world.
Complainant is the owner of a number of trademarks, including European Community Trademark, registration no. 39800 for LEGO and Australian trademark, registration no. B129.258 for LEGO.
Further, Complainant is the owner of over 2400 domain names containing the LEGO trademarks.
Respondent Transure Enterprise Ltd of Tortola, Virgin Islands, registered the disputed domain names through A Domain Privacy of Victoria, Australia. 5. Parties’ Contentions A. Complainant
Complainant holds that the disputed domain names are confusingly similar to Complainant’s trademark LEGO.
Moreover, Complainant asserts that Respondent does not have any rights or legitimate interests in respect of the disputed domain names. Respondent does not, to Complainant’s knowledge, have any registered trademarks corresponding to the disputed domain names, and the disputed domain names are not similar to the name of Respondent. Further, Complainant has never given Respondent any license or authorization of any kind to use the mark LEGO; nor is Respondent an authorized dealer of Complainant’s products. The use of the disputed domain names cannot be regarded as fair or legitimate.
Additionally, Complainant holds that the disputed domain names were registered and are being used in bad faith. The mark LEGO is world famous, and it is highly unlikely that Respondent was not aware of the mark and its owner at the time of registration. The disputed domain names refer to websites containing sponsored links, both relating to Complainant’s brands and products as well as products from Complainant's competitors. Complainant maintains that 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant has, from the presented evidence, successfully demonstrated its rights to the mark LEGO through both the registration and use of said mark. The disputed domain names and incorporate Complainant’s LEGO trademark in full.
The disputed domain name differs from Complainant’s mark LEGO solely by the inclusion of “indianjones”. The mere addition of a generic term or prefix to a registered trademark is, as follows from previous UDRP decisions, not sufficient to avoid confusing similarity between a domain name and the trademark of a complainant. The Panel refers to Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; and Siemens AG v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-1163.
Also, the Panel notes that “indianjones” is a misspelling of the Lucasfilm Ltd. trademark INDIANA JONES. Complainant and Lucasfilm Ltd. have entered into a license agreement concerning the use of the trademark Indiana Jones incorporated in the LEGO product line. The addition of “indianjones” is suited to enhance the confusing similarity, as there is a business relationship between the respective owners of the marks LEGO and INDIANA JONES. The Panel refers to Lego Juris A/S v. Nasirudin, E,WIPO Case No. D2011-0617.
As for the disputed domain name , it only differs from Complainant’s mark LEGO by adding the generic suffix ”incc’ to the domain name, and is, as such, confusingly similar to Complainant’s mark LEGO.
Thus, the Panel finds that the disputed domain names are identical or confusingly similar to Complainant’s mark LEGO. B. Rights or Legitimate Interests
According to Complainant, Respondent does not have any rights to or legitimate interests in the disputed domain names, as they do not correspond to any trademark registered by Respondent. Further, any use of Complainant’s trademarks has to be authorized by the Complainant, and Complainant has never given Respondent any authorization or license for such use.
Respondent is not known as “Indianlegojones” or any other name containing the mark LEGO, nor is Respondent an authorized dealer of Complainant’s products. Further, Respondent cannot claim any bona fide or legitimate use of the mark LEGO, see Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055.
It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph 4(c) of the Policy, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 2.1. The presented evidence and circumstances referred to by Complainant is, in the Panel’s view, sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names.
Thus, the Panel concludes that Respondent does not have any rights to or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The websites corresponding to the disputed domain names consist solely of sponsored links, most of which relate to Complainant’s brands and products as well as products from Complainant’s competitors. As a consequence, Respondent achieves or may achieve commercial gain when Internet users, searching for services offered by Complainant, are diverted to the websites corresponding to the disputed domain names.
The Panel finds that Respondent is using the disputed domain names to intentionally 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 follows from previous UDRP decisions that the registration and use of a domain name to re-direct Internet users to websites that offer products and services in competition with Complainant’s services, constitutes a bad faith registration and use. The Panel refers to Encyclopedia Britannica Inc. v. S,WIPO Case No. D2000-0753 and E v. Ult.Search Inc.,WIPO Case No. D2001-1319.
The Panel also finds it highly unlikely that Respondent was not aware of Complainant’s famous mark at the time of registration.
Additionally, the Panel refers to the fact that Respondent has been part of at least 57 UDRP proceedings, and has demonstrated a systematic pattern of abusive registrations not dissimilar to that of a serial cybersquatter, sse the WIPO Overview 2.0, paragraph 2.0, where it is stated that “A pattern of conduct can involve multiple UDRP cases with similar fact situations […]”.
The Panel also acknowledges that the LEGO brand has been exposed to a considerable amount of domain speculation as of late, most likely due to the considerable value of the LEGO mark.
Thus, the Panel finds that the disputed domain names have been registered and are being used in bad faith. 7. Decision
For 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.
Halvor Manshaus
Sole Panelist
Dated: May 2, 2012
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