Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Fateha el yakhloufi of Deurne, Belgium. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”), is registered with Vautron Rechenzentrum AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 10, 2012, the Center transmitted by email to Vautron Rechenzentrum AG a request for registrar verification in connection with the Domain Name. On May 11, 2012, Vautron Rechenzentrum AG transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2012.
The Center appointed Christopher Gibson as the sole panelist in this matter on June 14, 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 LEGO Juris A/S, based in Denmark, is the owner of the well-known LEGO trademark and other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. This includes the trademark LEGOLAND.
Complainant and its licensees, through their predecessors, commenced use of the LEGO trademark in the United States in 1953 to identify construction toys made and sold by them. Complainant's licensees are authorized to exploit Complainant's intellectual property rights, including its trademark rights, in Belgium, Germany and elsewhere. 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 2009 was more than USD 2.8 billion.
Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than 130 countries including in Belgium and Germany.
Complainant is the owner of more than 2400 domain name registrations containing the terms “lego” and “legoland”.
The Domain Name was registered by Respondent on February 1, 2011. 5. Parties’ Contentions A. Complainant
Complainant states that 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. For instance, in a list of the official top 500 Super brands for 2009/10, provided by Superbrands UK, LEGO appears as number 8 among the most famous trademarks and brands in the world. In 2010, the LEGO mark was rewarded as the best product brand in Germany by the German Best Brands study. The LEGO group has expanded 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 LEGOLAND parks are today owned by Merlin Entertainments. The LEGO group owns 20% of Merlin. However, all rights to the trademark LEGOLAND are still owned by the LEGO group and only Merlin Entertainments has a license to use the trademark in connection with the parks.
Complainant explains that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the status of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the mark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the legal protection for the LEGO mark goes far beyond toys and goods similar to toys.
Complainant's licensees are authorized to exploit Complainant's intellectual property rights, including its trademark rights. It is the strict policy of Complainant that all domain names containing the word LEGO must be owned by Complainant. (i) Identical or confusingly similar to a trademark in which Complainant has rights:
Complainant contends that the Domain Name comprises Complainant’s trademarks, LEGO and LEGOLAND, which have been registered as trademarks and domain names in numerous countries all over the world.
Complainant urges that the Domain Name is confusingly similar to Complainant’s world famous LEGO and LEGOLAND trademarks. The addition of the suffix “je” is not relevant and will not have any impact on the overall impression of the dominant name, LEGOLAND, instantly recognizable as a world famous trademark. The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the LEGOLAND trademark and the Domain Name.
Anyone who sees the Domain Name is bound to mistake it for a name related to Complainant. With reference to the reputation of the trademark LEGOLAND, there is a considerable risk that the public will perceive the Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. By using the trademark as a dominant part of the Domain Name, Respondent exploits the goodwill and the image of the LEGOLAND trademark, which may result in dilution and other damage for Complainant’s trademark. (ii) No rights or legitimate interests in respect of the Domain Name:
Complainant states it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Complainant has also not found anything that would suggest that Respondent has been using the term LEGO in any way that would give Respondent rights or legitimate interests in the name. Consequently, Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any kind has been given by Complainant to Respondent. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
Respondent registered the Domain Name on February 1, 2011. Complainant contends that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. It is highly unlikely that Respondent would not have known of Complainant’s legal rights in the marks LEGOLAND or LEGO at the time of the registration. It is rather obvious that the fame of the trademarks has motivated Respondent to register the Domain Name. This, among other facts, proves that Respondent’s interests cannot have been legitimate.
Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The website connected to the Domain Name displays the homepage of a DJ. However, there is no activity on the website and the text is in no real language. It looks like the site is under construction and that real content will be inserted. The site displays photos, links and a contact form. This, together with the fact that the Domain Name has been registered for one year, still with no content, indicates that the DJ cannot be regarded as commonly known under the name “LEGOLANDje”. The chosen name is a play on words and the name“legolanDJe” does not make any sense; it is obvious that Respondent plays with the trademark LEGOLAND and the suffix “je”.
Complainant contends that Respondent is trying to sponge off Complainant’s world famous trademark. No evidence has been found that Respondent uses the name as a company name or has any other legal right in the names LEGO or LEGOLAND. Referring to a previous UDRP case, Complainant asserts that the rights or legitimate interests cannot be created where the user of the Domain Name would not choose such a name unless he was seeking to create an impression of association with a complainant. Referring to the above, Respondent has no rights or legitimate interest in respect of the Domain Name. (iii) Registered and used in bad faith:
As noted above, Complainant states that the trademark LEGO has the status of a well-known mark with a substantial and widespread reputation throughout the world. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed in the last years. The considerable value and goodwill of the mark LEGO is most likely a large contribution to this and also a key factor that influenced Respondent’s decision to register the Domain Name.
Complainant first tried to contact Respondent on December 2, 2011 through a cease and desist letter. Complainant advised Respondent that the unauthorized use of the LEGO trademark within the Domain Name violated Complainant’s rights in the mark. Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees not exceeding out of pocket expenses. Respondent replied that he would change the Domain Name and come back with his costs. After several reminders sent, Respondent replied asking how to make the transfer. Complainant sent instructions, but no action was taken despite three reminders. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint according to the UDRP process.
Complainant suggests that it is hard to determine whether Respondent is a professional DJ (or musician) or not, as there is no real information on the website. However, the site gives the impression that the person behind it is a DJ or musician, and the contact form can most likely be used to make a booking. This would be a commercial use of the Domain Name. If the website is considered to be commercial, Complainant underlines that inactive use could be found to fulfill the bad faith criteria, when looking at all circumstances in Respondent’s behavior.
Consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
Complainant states in summary, LEGOLAND and LEGO are famous trademarks worldwide. There is no doubt that Respondent was aware of the rights Complainant has in the trademarks and the value of said trademarks, at the time of the registration. There is no connection between Respondent and Complainant. By using the Domain Name, Respondent is not making a legitimate non-commercial or fair use but is misleadingly diverting consumers for his own commercial gain.
Consequently, Respondent should be considered to have registered and to be using the Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(3) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the LEGO and LEGOLAND trademarks, just as previous UDRP panels have found that Complainant has established rights in these marks and that they are distinctive and well-known. The fame of these trademarks have been confirmed in numerous previous UDRP decisions: LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692 (“The Panel finds that the Complainant has established that LEGO and LEGOLAND are well-recognized and world famous trademarks and that the trademarks are distinctive”); LEGO Juris A/S v. Rampe Purda,WIPO Case No. 2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator,WIPO Case No. 2010-1260 (“In the present case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children.”). Moreover, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark, incorporating Complainant’s LEGOLAND mark in its entirety while adding the suffix “je”.
Because the Domain Name is confusingly similar to the LEGOLAND trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainant has alleged that Respondent is not commonly known by the Domain Name, nor made legitimate non-commercial or fair use of it. The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s trademarks. Moreover, the evidence shows that while the Domain Name is linked to a website that appears to display the homepage of a DJ, there is no activity on the website. In this case the Panel finds this use of the Domain Name, which is confusingly similar to Complainant’s well-known brand, does not provide Respondent a legitimate interest in the Domain Name under the Policy.
Respondent has not made any effort in the proceedings to demonstrate rights or legitimate interests. In the absence of any plausible explanation, the addition of mark LEGOKLAND to the term “je” appears to play deliberately on Complainant’s trademark. There is no other plausible explanation and Respondent has not provided one.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Finally, the Panel finds that Complainant has established bad faith registration and use under paragraph 4(b)(iv) of the Policy. The incorporation of Complainant’s internationally well-known LEGOLAND trademark in its entirety into the Domain Name, without any plausible explanation for doing so, causes confusing similarity that is suggestive of intentional targeting behavior by Respondent. In this regard, the Panel finds the analysis in The California Milk Processor Board v. Mattia Fraulini, WIPO Case No. D2011-1077 to be applicable. There, the panel found that the respondent’s registration of the domain name using "the combination “got milk” appears as more likely than not to be related to the various commercials and other advertising used by Complainant in its activity over the years.... On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant’s brand and of its value, and in attempt to benefit from it […].”. Similarly here, the use of LEGOLAND with the addition of “je” in the Domain Name appears to be in attempt to benefit from Complainant’s LEGOLAND trademark and brand. Moreover, there is an inherent likelihood that the Domain Name will draw visitors to Respondent’s linked website based on confusing similarity.
All of this is evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any Response from Respondent, there is no attempt at any rebuttal. 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 Domain Name be transferred to Complainant.
Christopher Gibson
Sole Panelist
Dated: July 10, 2012
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