The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domain Administrator of Shanghai, People’s Republic of China.
The disputed domain names <legoshoping.com> and <legosoccer.com> are registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 29, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On August 3, 2010, Moniker Online Services, 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 August 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on September 6, 2010. 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 (see 5.A below). The Complainant’s licensees are authorized to exploit the Complainant’s intellectual property rights, including its trademark rights, in the United States and elsewhere.
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 during 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 2008 was more than USD 1.8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including the United States.
The Complainant is also the owner of more than 1,000 domain names containing the word “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 Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The trademark LEGO is amongst 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. In support of this contention, the Panel has been provided with a copy of 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>.
As shown, the mark LEGO is in possession of substantial inherent and acquired distinctiveness. T he 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 names 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 names are 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. Level 5 Corp., WIPO Case No. D2008-1692 “The [p]anel 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. Michael Longo, WIPO Case No. D2008-1715 “The [p]anel finds, as numerous panels have found before, that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous”; 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.”
The addition of the suffixes “soccer” and “shoping” are not relevant and will not have any impact on the overall impression of the dominant part of the 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 names and is, therefore, irrelevant to determine the confusing similarity between the trademark and domain names.
Anyone who sees the disputed domain names is bound to mistake them for names 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 names either as domain names 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 names, 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 names, even without being aware of the content, are likely to think that the domain names are in some way connected to the Complainant, (“initial interest confusion”).
Summarizing this, the Complainant is the owner of the well-known and famous trademark LEGO. The disputed domain names are clearly confusingly similar to the Complainant’s registered trademark LEGO. The suffixes do not detract from the overall impression, and the domain names must, therefore, be considered to be confusingly similar with the Complainant’s trademark.
b. The Respondent has no rights or legitimate interests in respect of the Domain Names
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. The Complainant has also not found anything that would suggest that the Respondent has been using the LEGO trademark in any other way that would give it any rights or legitimate interests in the disputed domain names. Consequently, the Respondent may not claim any rights established by common usage.
It is also clear, that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 the panel stated that, “in the absence of any license or permission from the [c]omplainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by [r]espondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant, despite the text found on the webpage. This was stated by the panel, as a factor in the finding that the Respondent had no rights or legitimate interests in a domain name, in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
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 names. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant’s rights to it. This, among other facts, proves that the Respondent’s interests cannot have been legitimate. LEGO is a famous trademark worldwide and in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 it was established that any use of such a trademark in a domain name would violate the rights of the trademark owner. The panel stated that “given the notoriety of the [c]omplainant’s Deutsche Bank Mark, any use which the [r]espondent would make of any domain name, as here, that incorporated the [c]omplainant’s Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the [c]omplainant has long held in its mark”.
The Respondent is today not using the disputed domain names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to websites that contain sponsored links. By doing this, the Respondent is using the LEGO trademark and misleading Internet users to commercial websites and, consequently, the Respondent is tarnishing the trademark LEGO. This does not apply to the domain name <legoshoping.com> as this website has been deactivated sometime after the cease and desist letter was sent. It has, however, been stated that passive holding, under certain circumstances, may be seen as use in bad faith. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant’s world famous trademark. In Drexel University v. David Brouda, WIPO Case No. D2001-0067 the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [c]omplainant.”
Referring to the above mentioned, the Respondent has no rights or legitimate interest in respect of the disputed domain names.
c. The Domain Names were registered and are being used in bad faith
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
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. The awareness of the trademark LEGO is considered, in the whole community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years (citing numerous cases). 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 names.
The Complainant first tried to contact the Respondent on June 15, 2010 through a cease and desist letter sent by email, a copy of which has been provided to the Panel. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain names violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain names disputed domain names and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received, so a reminder was sent on June 23, 2010. The registrant’s contact information has changed since the letters initially were sent, but the email address for both disputed domain names remains the same. Since the efforts of trying to resolve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. 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 at contact, has been considered relevant in a finding of bad faith, see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The disputed domain name <legosoccer.com> is currently connected to a website displaying sponsored links (the disputed domain name <legoshoping.com> was also connected to sponsored links when the cease and desist letter referred to above was sent), evidence of which has been provided to the Panel. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages itself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 the respondent claimed that the website was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the website. The panel in that case then stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the [r]espondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the [r]espondent himself. The [r]espondent cannot infringe the [c]omplainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the [r]espondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the [r]egistrar to remove the parking page.” These circumstances apply in this case as well.
To summarize, LEGO is a famous trademark worldwide. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain names the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain.
Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain names in bad faith.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.
To qualify for cancellation or transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are 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.
In previous UDRP cases in which the respondent failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure 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.
Nevertheless, the panel must not 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 elements of proof, which allow the Panel to conclude that its allegations are true.
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed 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 names incorporate the Complainant’s well-known registered trademark LEGO. The addition of the words to each of them of “shoping” and “soccer” respectively is purely descriptive; and, furthermore, the addition of these descriptors does not serve to distinguish, for Policy purposes, the disputed domain names from the Complainant’s registered trademark LEGO. See Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the [p]anel held that ‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services’. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
Again, in Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, it was stated that, consistent with previous decisions “[…] common nouns are rarely distinguishing elements. Where […] the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable”.
See further on this point, the cases of United States Olympic Committee v. MIC, WIPO Case No. D2000-0189; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; and Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219.
Likewise, the addition of a generic top-level domain (gTLD) “.com” to the disputed domain names does not constitute an element in the domain names 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.
In view of the above, the Panel finds that the disputed domain names registered by the Respondent are confusingly similar to the Complainant’s well-known trademark LEGO, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for many years. The first element of the Policy has, therefore, been met.
In order to determine whether a respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- 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.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain names. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.
Neither is there any 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. Indeed, in the view of the Panel, the adoption by the Respondent of domain names confusingly similar to the Complainant’s trademark LEGO inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below), and the consequential tarnishing of the Complainant’s trademark LEGO and also the valuable goodwill that the Complainant has established in this trademark through its promotion, advertising and commercial use of the same over many years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain names.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
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:
“(iv) 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.”
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain names, is trading on the Complainant’s valuable goodwill established in its well-known registered trademark LEGO.
Again, by registering and using the disputed domain names incorporating the Complainant’s well-known registered trademark LEGO, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, 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. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649. The fact that the website at “legoshopping.com” was deactivated some time after the cease and desist letter does not prevent this finding. In any event, passive holding may be seen in this case as use in bad faith.
Furthermore, the fact that the disputed domain names include the Complainant’s well-known trademark LEGO, held and used in commerce by the Complainant for many years prior to the date the Respondent became the registrant of the disputed domain names, the Respondent must have known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain names, which include the Complainant’s mark, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. In this Panel’s view, a domain name which contains a third-party’s registered trademark would typically be used in good faith only by the owner of the respective right, by licensees, or a similar class of rights-holder, which does not appear to be the situation in the present case.
Further, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 in which it was stated that “[…] consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain names is confusing and misleading and, in the view of the Panel, is a further indication that the disputed domain names were registered and are being used in bad faith.
Also, even though not conclusive, the failure of the Respondent to reply to the Complainant’s cease and desist letter and reminder, as mentioned above, and, in particular, to respond to the Complainant’s reasonable offer to settle this matter amicably, in the view of the Panel, are further indications of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings is, again in the view of the Panel, a further indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, as well as those advanced by the Complainant in its contentions mentioned above, with which the Panel agrees, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <legoshoping.com> and <legosoccer.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: September 20, 2010