The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Oneandone Private Registration Chesterbrook, Pennsylvania, United States of America and Mintmultimedia LLC of Long Island City, New York, United States of America (the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2012.
On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 2012, 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 August 24, 2012.
The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “UDPR”), 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 August 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for response was September 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2012.
The Center appointed Young-Hill Liew as the sole panelist in this matter on September 27, 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.
The language of the proceedings is English in accordance with paragraph 11(a) of the Rules. 4. Factual Background
The 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. In particular, the Complainant holds trademark registrations in Europe and the United States and the United States trademark registration (1026871) dates back to 1975.
The 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. 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. The Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than 130 countries including in the United States, where Respondent is located. The Complainant is the owner of more than 2,400 domain names containing the term “lego”. The trademark LEGO is among the best-known trademarks in the world. For instance, LEGO was selected by Superbrands UK as number 8 of the most famous trademarks and brands in the world.
The Disputed Domain Name was registered on January 12, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Complainant is the owner of the well-known trademark LEGO and the Disputed Domain Name is clearly confusingly similar to the Complainant’s registered trademark LEGO. The Complainant contends that the suffix “smeister” does not detract from the overall impression and must therefore be considered to be confusingly similar with the Complainant’s trademark.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant adduces that the Respondent has no license or authorization of any other kind that would allow it to use the trademark LEGO.
The Complainant also contends that the Respondent registered the Disputed Domain Name in bad faith. First, the trademark LEGO is a worldwide famous trademark, which means that the Respondent would have been aware of the rights the Complainant has in the trademark LEGO and the value of said trademark, at the point of the registration. Second, there is no connection between the Respondent and the Complainant. Third, the Disputed Domain Name is currently connected to a shopping site where the Complainant’s products are sold. Consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name be transferred:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark to which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The dominant part of the Disputed Domain Name comprises the term LEGO, which is identical to the registered trademark LEGO, and has been registered by the Complainant as trademarks and domain names in numerous countries.
The Panel is prepared to find that the Disputed Domain Name is confusingly similar to the Complainant’s world famous trademark LEGO.
The fame of the trademark has been confirmed in numerous previous UDRP decisions. See LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260.
Although the Disputed Domain Name differs from the Complainant’s trademarks by the addition of the suffix “smeister”, the Panel finds that this does not eliminate the confusing similarity between the Complainant’s registered trademarks LEGO and the Disputed Domain Name . The addition of the suffix “smeister”, which may be understood to mean a person who is extremely knowledgeable about LEGO (“meister” means master in German and is akin to maestro), does not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark because “meister” is a generic suffix which merely describes the dominant part, namely, LEGO. It is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488.
The addition of the top-level domain (tLD) “.com” does not have any impact on the overall impression of the dominant portion of the Disputed Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Name.
Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights and paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has not acquired trademark or service mark rights; or
(iii) the 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 Respondent has failed to file any response in these proceedings. The Complainant has an established reputation in many jurisdictions throughout the world in its trademark LEGO. And the Complainant has asserted that it has neither licensed nor otherwise authorized the Respondent to use the Complainant’s trademark LEGO or to apply for any domain name incorporating any such mark.
The Panel agrees that “where a complainant has asserted that the respondent has no rights or legitimate interest in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Thus, in the absence of a Response or any communication from the Respondent the Panel believes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the Disputed Domain Name, which the Respondent has not rebutted, and satisfied the second element of the test in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole community and throughout the world. See LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840 and LEGO Juris A/S v. Reginald Hastings Jr,WIPO Case No. D2009-0680. Therefore, it is highly unlikely that the Respondent did not know of the Complainant's trademark LEGO at the time of the registration of the Disputed Domain Name.
The Panel agrees that “these facts make it likely that Respondent knew Complainant’s marks and unlikely that Respondent innocently registered the disputed domain name without such knowledge. Respondent’s knowledge of Complainant and Complainant’s LEGO Marks is strong evidence of bad faith” (see LEGO Juris A/S v. Raheel Ra and Protected Domain Services,WIPO Case No. D2011-0835).
Further, paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. The Disputed Domain Name is currently connected to a shopping site where the Complainant’s products are bought and/or sold. Moreover, the website at the Disputed Domain Name does not accurately and prominently disclose the Respondent’s relationship with the Complainant. Consequently, the Panel is satisfied that Respondent is using the Disputed Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. See Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946.
Therefore, the Panel concludes that Disputed Domain Name was registered and is being used in bad faith, and 4(a)(iii) of the Policy to be satisfied. 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 Name be transferred to the Complainant.
Young-Hill Liew
Sole Panelist
Dated: October 11, 2012
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