Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Stockholm, Sweden.
Respondent is NyunHwa Jung of KyungJu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with A LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2012, the Registrar 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, which was received by Respondent as per the Mail Delivery Subsystem (dated December 27, 2012, at 11:21 am); furthermore, Respondent refused the delivery of the parcel sent by DHL. Thus, the proceedings formally commenced on December 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 17, 2013.
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on January 22, 2013. 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 has owned the LEGO trademark registrations throughout the world since 1954, long before the disputed domain name was registered by Respondent. Some of the LEGO trademark registrations are the following:
Trademark Jurisdiction International Class Registration Number
LEGO
Afghanistan
28
3495
LEGO
African Union
28
51527
LEGO
Argentina
28
2092174
LEGO
Australia
28
11524
LEGO
Austria, Benelux, Bulgaria, Cyprus, Czeck Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom of Great Britain and Northern Ireland
3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42
CTM 39800
LEGO
Belize
28
6332
LEGO
Brazil
28
730130533
LEGO
Bulgaria
28
11101
LEGO
Cambodia
28
899
LEGO
Canada
9, 16, 28
106457
LEGO
Croatia
28
Z920726
LEGO
Denmark
28
604-1954
LEGO
Egypt
28
287932ir
LEGO
Gaza Strip
28
9365
LEGO
Hong Kong
16, 28
1105/1980
LEGO
India
28
240430
LEGO
Iraq
28
12442
LEGO
Israel
28
18759
LEGO
Japan
28
2086819
LEGO
Republic of Korea
28
66677
LEGO
Switzerland
28
281090
LEGO
United Kingdom
28
A 1405685
LEGO
Zambia
28
583/70
Complainant has owned the domain name since August 22, 1995, and owns several domain name registrations containing the trademark LEGO. Some of the domain name registrations are the following:
Domain Name
Domain Name
Domain Name
5. Parties’ Contentions A. Complainant
Complainant owns the trademark LEGO, which is largely protected around the world in connection with the toys and related goods, especially in the United States of America, Denmark, Latin America, the African Union and the European Community.
LEGO has been present in Republic of Korea where Complainant owns a trademark registration since 1980 (Registration number 66677).
The trademark LEGO is not only a “well-known” trademark but is among the best-known trademarks in the world, due to its constant and extensive advertisement.
The disputed domain name comprises the word “lego”, which is identical to Complainant’s trademark LEGO. The addition of the suffix “deals” is irrelevant on the overall impression of the disputed domain name.
Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name, has not been authorized to use the trademark LEGO by Complainant and is not a dealer of Complainant’s goods.
Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name connects to a website which offers to sell the disputed domain name.
The website, to which the disputed domain name resolves, evidences Respondent’s intention to exploit Internet user’s confusion between Complainant’s trademark and the disputed domain name to obtain commercial benefit.
Complainant tried to contact Respondent by means of a cease and desist letter. However, Respondent did not respond to the letter, even though Complainant sent several reminders. B. Respondent
Respondent did not reply to Complainant’s contentions despite of being duly notified. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Panel wants to place special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent. A. Identical or Confusingly Similar
Complainant contends it is the owner of the trademark LEGO throughout the world, to identify goods related to toys.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark or service mark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark, involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks1 and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that the complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark LEGO (Exhibit 6 to the Complaint), some of which have been verified ex officio by the Panel, such as:
- Australian Trademark Registration No. B 129258 registered on January 16, 1960, to identify goods in international class 28;
- Chilean Trademark Registration No. 854589 registered on January 4, 1979, to identify goods in international classes 16, 20 and 28;
- Canadean Trademark Registration No. 106457 registered on April 26, 1957, to identify goods in international classes 9, 16 and 28; and
- Colombian Trademark Registration No. 66251 registered on November 30, 1967, to identify goods in international class 28.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark LEGO for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name reproduces Complainant’s trademark with the mere inclusion of the word “deals” which is irrelevant in the overall impression of the disputed domain name.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademark LEGO, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark2. The same applies to country code top-level domains (ccTLD), i.e., “.co.”, “.de”, “.cr”, “.es”.
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico,WIPO Case No. D2000-0477, the panel stated that:
“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
Furthermore, the Panel believes that the disputed domain name is confusingly similar to the trademark LEGO as per the typical UDRP criteria. The Panel considers that the reproduction of the trademark LEGO, by the disputed domain name , is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark 3. Especially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the manufacturer of LEGO toys.
In addition, the Panel agrees with Complainant on the conclusion that including the term “deals” as a suffix of the disputed domain names is not sufficient to make the disputed domain name different from the trademark LEGO.
In fact, the expression “deals”, according to the Merriam Webster Dictionary means “to sell or distribute something as a business”4, which corresponds with the activity of manufacturing, offering and selling toys. Consequently, the expression “deals” is generic and descriptive regarding selling or distributing goods. Hence, consumers are likely to expect the disputed domain names to be related to deals of the products identified with the trademark LEGO. Thus, the disputed domain name is confusingly similar to Complainant’s trademark.
Respondent merely adds a generic or descriptive expression “deals” to the distinctive trademark LEGO. This addition rather than distinguishing the disputed domain names from Complainant’s trademarks makes it confusingly similar to the trademarks5. Hence, the disputed domain name should be deemed as confusingly similar to Complainant’s registered trademark6.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark LEGO and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with. B. Rights or Legitimate Interests
i) Prima Facie Case
Regarding this second element of paragraph 4(a) of the Policy, UDRP panels have agreed that requiring a complainant to prove the lack of rights or legitimate interests of a respondent in the domain name is often an impossible task: it not only requires proving a negative but also demands access to information that is usually within the knowledge of a respondent7.
In Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a complainant is required to make a prima facie case that a respondent lacks of rights or legitimate interests in a domain name. Once this prima facie case is made, the burden of production shifts to a respondent, who must come forward with concrete evidence of its rights or legitimate interests8. If a respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because: i) Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark LEGO in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because the disputed domain names connects to a website which offers to sell the disputed domain name, hence, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) Respondent has no prior rights or legitimate interest in the disputed domain name; and v) Respondent must have known Complainant’s trademark since it is a “well-known” and “reputed” trademark9.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
ii) Respondent’s rights or legitimate interests in the disputed Domain Name
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, the respondent’s 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) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no 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 Panel notes that Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that Respondent has failed to submit a Response to the Complaint filed against it. In particular, Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the disputed domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as it is consider appropriate, which are that Respondent is unable to adduce evidence of any rights or legitimate interests to the disputed domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(i) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the word “lego” in its business operation.
(ii) There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the trademark LEGO or to apply for or use any domain name incorporating the trademark LEGO;
(iii) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name.
(iv) There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name.
(v) The disputed domain name is confusingly similar to Complainant’s LEGO trademark.
(vi) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Thus, Complainant established that Respondent does not have rights or legitimate interests in the disputed domain name , which Respondent did not rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since he or she must have had knowledge of the trademark LEGO on April 8, 201210.
The Panel agrees with Complainant. The fact that Respondent chose the word “lego” to make up his or her disputed domain name is in this Panel’s view evidence per se of his or her bad faith. The Panel finds this selection was deliberate and not product of chance: “lego” is not a common word in the English language as the Panel confirmed through a search conducted in an English online dictionary11. Given the extent of the trademark LEGO’s well-known character, Respondent simply could not have been unaware of it. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it. Indeed, LEGO is a well-known and famous trademark as has been established before:
“The record indicates that Complainant has owned the LEGO trademark for decades and has registered the mark in multiple jurisdictions for Class 28 goods which include construction toys as well as other classes. Prior decisions have held that the LEGO mark is well-known, including LEGO Juris A/S v. Reginald Hastings Jr, supra (‘The LEGO mark is well-known worldwide’), LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052 (‘Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous), and LEGO Juris A/S v. Michael Longo, supra (‘The Panel finds it established that the trademark LEGO is well-known’). Decisions have also recognized the fame of the LEGOLAND trademark, such as LEGO Juris A/S v. Level 5 Corp., supra (‘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’) and LEGO Juris A/S v. D and Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0381 (finding for Complainant and ordering the transfer of , noting that Respondent must have been well aware of the Complainant given the ‘nature of the LEGO and LEGOLAND marks as well-known, if not famous…’)” 12.
Additionally, as shown in Exhibit 9 to the Complaint, the trademark LEGO was ranked in 2009-2010 as the eighth (8th) Superbrand by the Center for Brand Analysis, being the number one (1) trademark within the “Leisure & Entertainment – Games & Toys” category.
Thus, this Panel shares the view that the mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith13. See Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, Complainant contends in the Complaint that Respondent is using the disputed domain name in bad faith, since the disputed domain name resolves to a website which states the following:
“This Domain is for Sale
Under Construction Page.
We are looking for Investors in developing our new WebSite
This website is under construction now.
However, you can buy this domain showing this webpage if your price is ok.
Please send us your offer to […]@”.
The Panel finds that Respondent must have known that the word “lego” within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website from which he or she expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
Additionally, Complainant sent a cease and desist letter requesting Respondent to transfer the disputed domain name to Complainant for which Complainant would pay all expenses. Respondent did not respond to the letter, despite Complainant reminders.
This circumstance clearly indicates that Respondent has registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes bad faith usage under paragraph 4(b)(i) of the Policy.
Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to the disputed domain name. 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 Complainant.
Fernando Triana, Esq.
Sole Panelist
Date: February 5, 2013
1 See MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; see also The British Broadcasting Corporation v. Jamie Renteria,WIPO Case No. D2000-0050.
2 See Altec Industries, Inc. v. I 80 Equipment, NAF Claim No. 1437753.
3 See ER Marks, Inc. and QVC, Inc. v. Hansmann, NAF Claim No. 1381755; see also Oki Data Ams., Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
4
5 See LEGO Juris A/S v. W,WIPO Case No. D2010-2101 (“The disputed domain name is confusingly similar to the LEGO trademark in that Complainant adds only the generic term ‘deal’ as a suffix. The addition of ‘deal’ does not mitigate any possible confusion, rather contributes to the likelihood that consumers will believe that the website is related to Complainant. Prior cases have held that the incorporation of the term ‘deal(s)’ into a domain name is non-distinctive and does not avoid confusing similarity. See, e.g., Red Bull GmbH v. Euinet Corporation,WIPO Case No. D2007-0771 [finding that the domain name is confusingly similar to the RED BULL trademark because ‘deals’ ‘refers to a commercial activity’ and refers specifically to “redbull”, suggesting a commercial activity relating to “redbull”, thereby confirming the trademark function of the “redbull” element of the disputed domain name’]; and QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc.,WIPO Case No. D2009-0135 [finding that the ‘deals’ portion of the disputed domain name ‘may tend, if anything, to increase the likelihood of confusion, because the word indicates endorsement of the domain name by Complainant’, owner of the QVC mark].”)
6 See Forest Laboratories, Inc. v. candrug,WIPO Case No. D2008-0382 (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. H. Monseen,WIPO Case No. D2003-0275.
7 See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyP,WIPO Case No. D2012-0875; see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services,WIPO Case No. D2012-0474.
8 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
9 See LEGO Juris A/S v. W,WIPO Case No. D2010-2101 (“The record indicates that Complainant has owned the LEGO trademark for decades and has registered the mark in multiple jurisdictions for Class 28 goods which include construction toys as well as other classes. Prior decisions have held that the LEGO mark is well-known, including LEGO Juris A/S v. Reginald Hastings Jr, supra [‘The LEGO mark is well-known worldwide’], LEGO Juris A/S v. M. Moench,WIPO Case No. DNL2009-0052 [‘Complainant has established that the LEGO trademark has acquired a high reputation and should be considered as well-recognized and world famous’], and LEGO Juris A/S v. Michael Longo, supra [‘The Panel finds it established that the trademark LEGO is well-known’]. Decisions have also recognized the fame of the LEGOLAND trademark, such as LEGO Juris A/S v. Level 5 Corp., supra [‘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’] and LEGO Juris A/S v. D and Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0381 [finding for Complainant and ordering the transfer of , noting that Respondent must have been well aware of the Complainant given the ‘nature of the LEGO and LEGOLAND marks as well-known, if not famous…’]”)
10 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services,WIPO Case No. D2012-0474.
11 English: “”.
12 See LEGO Juris A/S v. W,WIPO Case No. D2010-2101.
13 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
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