The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Seonghwan Kim of Seoul, Republic of Korea (“Korea”).
The disputed domain name <legoarts.com> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2012. On April 27, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On April 27, 2012, GoDaddy.com, LLC. 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Andrew Mansfield as the sole panelist in this matter on June 7, 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 Complainant is the owner of the trademark LEGO, and other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products. The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in Korea and elsewhere. LEGO is protected as a trademark in Korea under registration number 66677. The Respondent’s country of residence is Korea.
The Complainant and its licensees (collectively the “LEGO Group of Companies” or the “LEGO Group”), through their predecessors, commenced use of the LEGO mark in the United States of America during 1953, to identify construction toys made and sold by them. The revenue for the LEGO Group in 2009 was more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Korea.
The Complainant is also the owner of more than 2,400 domain names containing the term “lego.” It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.
The Complainant makes the following contentions:
a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
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. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, in a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.
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 <lego.com>.
The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole European Community to be significant. According to the provisions of Article 6bis of the Paris Convention for Protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 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 well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.
The dominant parts of the disputed domain name comprise the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world, evidence of which has been provided to the Panel.
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: for example, see 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.”
The addition of the suffix “arts” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, “lego”, instantly recognizable as a world famous trademark. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 it was stated that 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.
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 disputed domain name.
Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO, there is a considerable risk that the trade public will perceive the disputed domain name either as domain name owned by the Complainant or that there is some kind of commercial relation between the Respondent and the Complainant. The trademark also risks being tarnished by being connected to a website. By using the Complainant’s well-known and famous trademark LEGO as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark. Persons seeing the disputed domain name, even without being aware of the content, are likely to think that the disputed domain name is in some way connected to the Complainant, (“initial interest confusion”).
b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using LEGO mark in any other way that would give it any right or legitimate interest in the disputed domain name. Consequently the Respondent may not claim any rights established by common usage.
Complainant indicates that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO.
The Respondent registered the disputed domain name on March 2, 2012. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name.
It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the name “Lego” at the time of the registration. It is rather obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. That is, the Respondent cannot claim to have been using LEGO mark, without being aware of the Complainant’s rights to it.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to generate traffic to a website displaying pay-per-click (“PPC”) to links different shopping websites. The PPC revenue is generated when the Registrars place contextually relevant advertisements on a parked domain name. Whilst in principle connecting a domain name to a parking page containing sponsored links is not per se illegitimate, using a third party’s well-known trademark to increase access to the parking page and as such generate more revenues cannot be considered a legitimate noncommercial or fair use of the domain name. Further, the disputed domain name is offered for sale on the website, which indicates that the Respondent cannot be found to have right of legitimate interest in the disputed domain name. No evidence has been found that the Respondent uses the disputed domain name as a company name or has any other legal right in the name “lego”.
c) The disputed domain name was registered and is being 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 European Community and throughout the world. The awareness of the trademark LEGO is considered, in the whole European Community in general, to be significant and substantial. The considerable value and goodwill of the mark LEGO is most likely, a large contribution to this and also what made the Respondent register the disputed domain name here.
The Complainant first tried to contact the Respondent on March 20, 2012 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received. The Complainant sent two reminders on March 28, 2012 and April 10, 2012, respectively. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP proceeding. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith.
The use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use, see for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623. Even if no active choice was made, the Respondent is at all times responsible for the disputed domain name registration, whether the PPC is generated by the Registrar through whom the disputed domain name is registered or if the PPC links are generated by the Respondent itself. The consensus view of WIPO panels is that parking and landing pages or PPC links may only generate legitimate interests if the domain name is of a generic nature and it genuinely related to the generic meaning of the domain name at issue, provided that there is no capitalization on trademark value. On the contrary, where such links are based on trademarks, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.
Whether or not the Respondent is the one getting revenue from the products being sold at the websites is irrelevant for the finding of bad faith in this case.
As mentioned earlier, the website connected to the disputed domain name offers the disputed domain name for sale. The Complainant finds no other explanation than that the Respondent registered the disputed domain name with the intention of a sale, and by this profit from the well-known status connected to the Complainant’s trademark. The Respondent is using the disputed domain name 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 website.
The Respondent did not reply to the Complainant’s contentions.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
In accordance with paragraph 15(a) of the Rules, the panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
Prior UDRP panels have issued decisions based both on complainants’ assertions and, additionally, inferences drawn from respondents’ failures to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936. The panel must not, however, decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced evidence sufficient to prove its allegations.
It is well established in previous UDRP panel decisions that incorporation of a complainant’s registered trademark in a domain name may typically be sufficient to establish that that domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S.Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known registered trademark LEGO. The addition of the word “arts” does not distinguish the disputed domain name from the Complainant’s registered trademark LEGO. See, e.g., Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546.
Further, the addition of a generic top-level domain (gTLD) “.com” to a domain name does not constitute a distinguishing element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
There is no dispute that the famous mark LEGO is incorporated in the disputed domain name. The Panel finds the incorporation causes the disputed domain name to be confusingly similar to the LEGO mark. The Complainant has demonstrated, to the satisfaction of the Panel that it has substantial world-wide rights in the mark LEGO and has made commercial use of the same for many years. The Complainant has satisfied the first element of the Policy.
In order to determine whether a respondent has any rights or legitimate interests in respect to a domain name (paragraph 4(c) of the Policy), the panel may, without limitation, consider:
- whether before any notice to the respondent of the dispute, there is any evidence of 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;
- whether the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights;
- whether the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Panel has been presented with no evidence that the Respondent has any rights or legitimate interests with respect to the disputed domain name due to the Respondent’s failure to reply to the Complaint. In addition and for the same reason, there is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark LEGO. The disputed domain name was registered only months ago. This indicates to the Panel that it is unlikely the Respondent has commonly been known by the disputed domain name. Based on the evidence the Complainant submitted, the Respondent is not protected by fair use.
For all of these reasons, the Panel concludes that the Respondent does not have any right or legitimate interest in the disputed domain name.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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] web site or location.”
While paragraph 4(b)(iv) is illustrative, it is neither conclusive nor exhaustive.
The Panel finds that the incorporation of the mark LEGO in the disputed domain name misleads Internet users and consumers into believing that the Respondent is connected to, sponsored by or affiliated with the Complainant and its business or that the Respondent’s activities are approved or endorsed by the Complainant. Creating such a false impression from a famous mark is, according to this Panel, a sign of bad faith on the part of the Respondent. The fact that the disputed domain name does not resolve any longer to PPC links is not relevant to the determination of bad faith registration and use up to the point the Complaint was filed.
The Panel finds that the Respondent must have known of the Complainant’s rights in the LEGO mark at the time the Respondent registered the disputed domain name. Given the world-wide recognition of the LEGO mark it stretches credulity to assert that the Respondent had not heard of LEGO mark.
The Panel also considers the failure of the Respondent to reply to the Complainant’s cease and desist letter (and reminder letters) as a further sign of bad faith registration and use. Given the circumstances of this case, the failure of the Respondent to answer the Complaint or take any part in the present proceedings is yet another indicator of bad faith registration and use. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <legoarts.com> be transferred to the Complainant.
Andrew Mansfield
Sole Panelist
Dated: June 21, 2012