The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB of Stockholm, Sweden.
The Respondent is Bridge Port Enterprises Limited of St. Johns, Antigua and Barbuda.
The disputed domain name <herofactorylego.com> is registered with Fabulous.com Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2011. On March 8, 2011, the Center transmitted by email to Fabulous.com Pty Ltd. a request for registrar verification in connection with the disputed domain name. On March 9 and 16, 2011, Fabulous.com Pty Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2011 providing the registrant and contact information disclosed by Fabulous.com Pty Ltd., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 17, 2011.
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 March 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on April 21, 2011. 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant, based in Denmark, is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction toys and other LEGO branded products.
4.2 The Complainant and its licensees (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 growth of the business with sales of LEGO construction toys by the LEGO Group in 2009 was more than USD 2.8 billion.
4.3 The Complainant has subsidiaries and branches throughout the world and LEGO products are sold in more than 130 countries.
4.4 The LEGO Group has procured the registration of many variations of the LEGO trademark on a worldwide basis. The LEGO mark is used on products, packaging, displays, advertising, and promotional materials of the LEGO Group. A list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, lists the LEGO mark as number 8 of the most famous trademarks and brands in the world. The LEGO Group has also expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
4.5 The LEGO Group maintains an extensive website under the domain name <lego.com>. The Complainant is also the owner of more than 1000 domain names containing the term “lego”.
4.6 The disputed domain name was registered on November 23, 2010, which is subsequent to the vast majority of the worldwide trademark registrations of LEGO.
5.1 The Complainant asserts that LEGO is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant’s LEGO trademark for the following reasons:
(a) the disputed domain name comprises the Complainant’s LEGO trademark as its dominant feature;
(b) the inclusion of the gTLD “.com” is inconsequential when determining similarities between domain names and trademarks; and
(c) the prefix “herofactory” does not detract from the overall impression formed by the public that the disputed domain name is owned by or related to the Complainant.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Respondent is not using the disputed domain name as a company name nor has any evidence been adduced to indicate the Respondent’s rights to the disputed domain name.
(b) the Respondent is not, in anyway, related to the Complainant’s business, is not one of its agents and does not carry out any activity for or has any business with the Complainant. The Complainant has not licensed or authorized the Respondent in any way including to register or to use the disputed domain name.
(c) the disputed domain name is not being used by the Respondent in connection with a bona fide offering of goods or services as it resolves to a website that displays sponsored links.
(d) given that the LEGO trademark is a well-known mark, it is highly unlikely that the Respondent had not known of the Complainant’s rights to the LEGO trademark at the point of registration of the disputed domain name.
5.3 The Complainant further contends that the Respondent registered and/or used the disputed domain name in bad faith and relies on the following:
(a) the Complainant has not found any evidence to suggest that the Respondent has any legitimate rights or interests to the trademark LEGO including any licences or authorisations from the Complainant or the LEGO Group.
(b) given that the LEGO trademark is a well-known mark, it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the trademark at the time of the registration.
(c) the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
(d) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but is instead seeking to ride on and usurp the Complainant’s reputation and goodwill in the LEGO trademark. On the contrary, the disputed domain name resolves to a website that displays sponsored links.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark LEGO. The LEGO trademark (including variations thereof) is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively by the Complainant and the LEGO Group on a worldwide basis. The Complainant has also registered numerous domain names comprising the LEGO trademark and variations thereof.
There have also been several UDRP decisions administered by the Center which found that the LEGO trademark was a well-known or reputable mark (see LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680).
The disputed domain name comprises the Complainant’s LEGO trademark in its entirety with the additional generic prefixes “herofactory”. These additional generic words do not appear to detract from the overall impression that the disputed domain name is somehow connected to or associated with the Complainant as the dominant feature of the disputed domain name is the distinctive LEGO trademark.
As such the Panel finds that the disputed domain name is confusingly similar to the Complainant's LEGO trademark for the purpose of the Policy.
The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence to indicate that the Respondent was known by the name “hero”, “factory”, “lego” or any combination thereof.
The Complainant has adduced sufficient evidence that the disputed domain name is being used solely for commercial gain. The disputed domain name resolves to a website located at “www.herofactorylego.com” which displays sponsored links. It does not appear that the Respondent is using the disputed domain name in respect of a bona fide offering of goods or services.
The Complainant has also asserted that it is not related to or associated with the Respondent and that the Respondent is not authorized or licensed to use the Complainant’s LEGO trademarks or to register the disputed domain name.
The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name. Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
The Panel agrees with the contention by the Complainant that the Respondent must have had knowledge of the Complainant’s rights to the LEGO trademark when it registered and started using the disputed domain name.
The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was only as recent as 2010 when compared to the date when the Complainant started using the LEGO trademarks and the “www.lego.com” website, the notoriety through widespread long use and promotion of the LEGO trademark by the Complainant at a global level and the fact that the disputed domain name resolved to a website that displayed sponsored links rather than a bona fide offering of goods or services.
The Panel could not find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
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 <herofactorylego.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: May 5, 2011