WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Above.com Domain Privacy / Ready Asset, Nish Patel

Case No. D2013-0114

1. The Parties

The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Above.com Domain Privacy of Victoria, Australia / Nish Patel of Xiamen, China.

2. The Domain Name and Registrar

The disputed domain name <wwwlegofriends.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 18, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2013 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 January 18, 2013.

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 the Respondent of the Complaint, and the proceedings commenced on January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.

The Center appointed Steven A. Maier as the sole panelist in this matter on February 18, 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

The Complainant is a limited company incorporated in Denmark and is a manufacturer of construction toys and other products under the brand name and mark LEGO.

The Complainant is the owner of numerous trademark registrations throughout the world for the mark LEGO in International Class 28 and otherwise.

The Respondent registered the Domain Name on December 3, 2012.

The Domain Name has been used for the purposes of a “parking page” providing links to retailers of goods and services including toys and LEGO branded merchandise.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant submits evidence of its trademark registrations for the mark LEGO including several hundred such marks that are registered in jurisdictions throughout the world. The registrations date from as early as 1954 and include, for example, Community Trade Mark number 39800 registered on October 5, 1998 for numerous classes of goods and services including games and playthings in International Class 28; United States trademark number 1018875 registered on August 26, 1975 for toy building blocks and related products in International Class 28; and Australian trademark number 1282485 registered on September 14, 2009 for numerous goods and services including games and playthings in International Class 28.

The Complainant also claims wide public recognition of the LEGO name and brand throughout the world. It states that it has made and sold goods under that mark since 1953 and that it sells products in more than 130 countries throughout the world. It states that it owns over 1,000 domain names which include the term “lego” and that the LEGO name and mark enjoy a high degree of recognition throughout the world. It also provides evidence that it was the 13th most famous brand in the world according to a survey conducted by Superbrands UK in 2012. It submits in the circumstances that the mark LEGO has the status of a “well-known” mark (for the purposes of the TRIPS Agreement 1995 and otherwise) and therefore enjoys protection from the use of confusingly similar marks, including protection that extends beyond the scope of the goods and services for which it is specifically registered.

The Complainant submits that (ignoring the top level domain “.com”) the Domain Name comprises its LEGO mark together with the prefix “www” and the suffix “friends”. The prefix “www” is commonly adopted in cases of cybersquatting and should be disregarded. The suffix “friends” is not relevant and can have no impact on the impression given by the dominant and instantly recognizable part of the name, i.e. LEGO.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).

The Complainant submits that it has never licensed or authorised the Respondent to use its LEGO mark and that the Respondent is not an authorised dealer of the Complainant’s products. Nor has the Complainant found any evidence of any similar trademark registered by the Respondent or any other legitimate use of the LEGO name by the Respondent in the course of trade. The mere fact of registration of the Domain Name does not give rise to any rights or legitimate interests in it.

The Complainant submits that, given the fame of the Complainant’s mark, it is highly unlikely that the Respondent was unaware of it at the date of registration of the Domain Name. On the contrary, the likelihood is that the Respondent was aware of the LEGO mark and was motivated to register the Domain Name precisely because of its fame. In the circumstances, the Respondent is using the Domain Name in order to “sponge” off the Complainant’s trademark and is tarnishing that trademark in the process. The Respondent is using the Domain Name to create an impression of association with the Complainant and to mislead Internet users into visiting a website which contains sponsored links from which the Respondent derives revenue. This is not a bona fide use of the Domain Name and does not give rise to any rights or legitimate interests in it.

The Complainant submits that the Domain Name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant relies on the same factual background as in the case of “rights or legitimate interests”.

The Complainant submits that the Respondent is using the Domain Name to mislead Internet users into visiting a website which contains sponsored links. It is irrelevant whether the Complainant is directly responsible for the links that appear on that website or whether the Respondent (as opposed to a third party) is the recipient of the revenue generated. In the circumstances described, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. This represents registration and use of the Domain Name in bad faith.

The Complainant states that it sent a “cease and desist” letter to the Respondent on January 3, 2013 requesting a transfer of the Domain Name and offering to pay registration and transfer expenses, but the Respondent did not reply to the letter.

The Complainant requests a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has failed to reply to the Complaint, it is still necessary for the Complainant to prove its case in respect of each of the above elements.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of numerous registered trademarks for the name LEGO throughout the world. These include Community and United States trademarks for construction toys and related products in Class 28. The Complainant has also provided evidence of the significant worldwide recognition of the LEGO brand dating back to the 1950s. The Panel finds this sufficient to establish that the Complainant also enjoys significant unregistered rights in the name and mark LEGO in numerous territories worldwide and, further, that the mark LEGO has the status of a “well-known” trademark.

The Domain Name consists of the components “www”, “lego” and “friends” in addition to the suffix “.com”, which may be disregarded for the purposes of considering confusing similarity under the first element of paragraph 4(a) of the Policy. The Panel accepts the Complainant’s submission that the term “www” is irrelevant as reflecting the standard prefix for a website. The term “friends” is generic and/or descriptive term and the Panel accepts the Complainant’s contention that its inclusion does not serve to distinguish the Domain Name from the term “lego”, which is the distinctive component of the Domain Name.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s evidence that it has never licensed or authorised the Respondent to use its LEGO mark and that the Respondent is not an authorised dealer in the Complainant’s products.

The Respondent has failed to reply to the Complaint and has not therefore provided any evidence of rights or legitimate interests in the Domain Name, whether in accordance with the circumstances mentioned in paragraph 4(c) of the Policy or otherwise. Nor does any other evidence of rights or legitimate interests on the part of the Respondent appear from the material available to the Panel.

On the basis of the evidence submitted by the Complainant, which the Respondent has not contradicted, the Panel finds that the Respondent has used the Domain Name for the purposes of a “parking page” website which provides links to suppliers of various goods and services. It is to be inferred that these links produce revenue for the Respondent on a “pay per click” basis. On the evidence submitted by the Complainant, the links include those which contain or refer to the Complainant’s LEGO mark. In these circumstances, the Panel is of the view that the Respondent has used the Domain Names in a manner which falsely suggests an association with the Complainant or its goods unfairly to profit from the Complainant’s goodwill. The use of the Domain Name in this manner does not establish any rights or legitimate interests in the Domain Name on the part of the Respondent.

In the circumstances, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel’s findings in connection with “rights or legitimate interests” are also relevant to the consideration of bad faith.

Under paragraph 4(b) of the Policy, it shall be evidence of registration and use in bad faith if the Complainant can show that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. The Panel finds that the Respondent has done so in the case. The Respondent has offered no explanation for its choice of the Domain Name, nor did it respond to the Complainant’s “cease and desist” letter. The Panel infers from the Respondent’s choice and use of the name that it registered and has used the Domain Name with the intention of unfairly profiting from the Complainants’ goodwill. This conduct constitutes registration and use of the Domain Name in bad faith for the purpose of the Policy.

The Panel notes in passing that the Complainant has included among its annexures in support of the Complaint a list of its domain names including <legofriends.com> and a screen print from a website at “www.legofriends.com”, which appears to be an official or authorised website promoting the Complainant’s products. For reasons which are unclear, however, the Complainant makes no express reference to these matters in the Complaint, preferring only to say that the term “friends” does not distinguish the Domain Name from the Complainant’s LEGO trademark. Plainly, in the Panel’s view the Respondent’s registration and use of a domain name which differs from the Complaint’s own, active, domain name only by the addition of the prefix “www” is highly indicative of bad faith.

Accordingly, the Panel finds that the Domain Name was registered and is 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 Domain Name <wwwlegofriends.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: March 4, 2013