The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Eveline Christiany of Surabaya, Indonesia.
The disputed domain names <legoninjagofiretemple.org>, <legospacecenter.net>, <legostarwarsadventcalendar.net>, <legostarwarsmillenniumfalcon.net> are registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On December 29, 2011, 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 January 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2012.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on February 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, such as, 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 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, through their predecessors, commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them. Said use has been extensive, exclusive and continuous since then. 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 2009, was more than USD 2,8 billion. During 2010 its global market share rose from 4,8% at the close of 2009 to approx. 5,9% at end 2010. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including Indonesia.
The Complainant is also owner of more than 1000 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.
Furthermore, the LEGO Group has a license agreement with Lucasfilm Ltd. concerning the use of the trademark STAR WARS. Originally the agreement was slated for the period between 1999-2007, but due to the extreme popularity of the product, the undertakings extended the agreement till 2011. Since the LEGO Group translated “Star Wars” into the construction play pattern, the line has generated more than USD 1 billion in retail sales around the world.
The Complainant makes the following contentions:
(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 to its 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 assertion, the Panel has been provided with a copy of a list of the official top 500 Superbrands for 2009/2010, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.
Furthermore, 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 part of the domains in question, namely <legoninjagofiretemple.org>, <legostarwarsmilleniumfalcon.net>, <legostarwarsadventcalendar.net> and <legospacecenter.net> include 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 domain names are confusingly similar to the Complainant’s famous trademark LEGO. The fame of the trademark has been confirmed in numerous previous UDRP decisions: see Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 LEGO, “LEGO is clearly a well-known mark”; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260, “In the present case, the disputed domain names incorporate the [c]omplainant’s well-known registered trademark LEGO”, 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 “ninjagofiretemple”, “starwarsmillenniumfalcon”, “starwarsadventcalendar” or “spacecenter” are not relevant and will not have any impact on the overall impression of the dominant part of the names “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. As the Complainant has, or previously had, specific products named, LEGO Ninjago Fire Temple, LEGO STAR WARS Millennium Falcon, LEGO STAR WARS Advent Calendar and LEGO Space Center the suffixes are rather fitted to strengthen the impression that the disputed domain names belong to, or are affiliated with the Complainant. In LEGO Juris A/S v. school, WIPO Case No. D2011-0639 it was stated that “[t]he disputed domain name consists of the [c]omplainant's trade mark in its entirety, together with a mark under which an extremely successful product line has been sold for over a decade. Far from resolving any confusion caused by the use of the term “LEGO”, the addition of the term “Starwarsets” actually exacerbates it.”
The addition of the top-level domains “.org” or “.net” 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 the domain names.
Anyone who sees the domain names are 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 with the Complainant. By using the trademark 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 they are in some way connected to the Complainant, (“initial interest confusion”).
Summarizing this, the Complainant is the owner of the well-known trademark LEGO. The disputed domain names are confusingly similar to the Complainant’s registered trademark LEGO. The suffixes do not detract from the overall impression, and the domain names, these are rather fitted to strengthen the impression that the domain names belong to, or are affiliated with the Complainant and must therefore be considered to be confusingly similar with the Complainant’s trademark.
(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 LEGO in any other way that would give him any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.
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. This was stated by the panel as a factor in the finding of non legitimate interest with the [r]espondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312. The Respondent registered the disputed domain names on September 13, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the trademark 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 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 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 sites where visitors are redirected to Amazon.com to do the actual purchase. The Respondent does not qualify to fulfill the requirements for a bona fide offering set out in the often cited Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the requirements are also included in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). First of all, the Respondent cannot be considered as a reseller as he is not the actual reseller, the reseller is Amazon.com and the Respondent is getting revenue when a visitor clicks through on the links provided. These links should therefore be considered as sponsored links. This set up was discussed in LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057 regarding the domain <legohalo.com>. In that case the panelist stated that “[t]he [p]anel finds that no bona fide offering of goods and services can be found, when a site is using, without a license or authorization, a registered trademark as part of its name to indirectly solicit orders for products sold by others, even if the products finally sold are made by [c]omplainant.”
Secondly, another criterion for making a bona fide offering is that the site shall disclose the registrant’s relationship with the trademark owner, which is not the case as no disclaimer is displayed on the website. Instead copyright texts are inserted at the bottom of the websites which rather gives the impression that the Respondent has rights in the trademark and products displayed on the website. In the recently decided LEGO Juris A/S v. Masayuki Sato, WIPO Case No. D2011-1639 the panel stated that “[r]espondent does not accurately disclose its non-existing relationship with the trademark owner. On the contrary, [r]espondent prominently placed a disclaimer stating “LEGOFAN All Rights Reserved” on its website. This disclaimer could rather be seen as [r]espondent's claim to have rights in the words “LEGOFAN”.”
The use of the domain name to sponsored links is not a bona fide use of the domain name, see earlier UDRP cases including the LEGO trademark, LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156 “[f]urther, [r]espondent’s use of the disputed domain name to sponsor links to paid advertising is no use of the disputed domain name in connection with a bona fide offering of goods or services.”, this was also discussed in LEGO Juris A/S v. Jan Cerny, WIPO Case No. D2010-0707.
Referring to the above mentioned the Respondent has no rights or legitimate interest in respect of the disputed domain names.
(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 reputation throughout the world. The awareness of the trademark LEGO is considered 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 what made the Respondent register the domain names at issue here.
The Complainant first tried to contact the Respondent on December 1, 2011 through a cease and desist letter sent by email, a copy of which has been provided to the Panel. In the email the Complainant advised the Respondent that the unauthorized use of the LEGO trademark in the disputed domain names violated the rights in the trademark LEGO, owned by the Complainant. The Complainant requested the immediate transfer of the disputed domain names and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). The Respondent replied with just one sentence stating that the parties had to take this matter “the juridical way”. Since the efforts of trying to solve 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 of 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 names are currently connected to websites containing sponsored links, from which the Respondent most likely derives income once a visitor clicks on the links and is redirected to Amazon.com. Consequently, the Respondent is using the domain names 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 websites. The same scenario, displaying Amazon ads and re-directing the visitors to a third party website was at hand in the following UDRP cases; Lego Juris A/S v. Adry Asry, WIPO Case No. D2011-1224, LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913, Hermes International v. Yuanyuan Deng / Deng Yuan, WIPO Case No. D2011-1000. The consensus view in all three cases was that although the website itself does not offer goods for sale, but re-directs customers to e.g. Amazon.com where the [r]espondent may obtain revenue from a click-through advertising is not necessary to show he is using the domain name in bad faith, but where the use is extended to a domain name which is confusingly similar to the [c]omplainant’s trademark, such use will constitute bad use when it is made to intentionally attempt, for commercial gain, to divert Internet traffic to its website. 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. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 the respondent claimed that he had actually not received any money from the website. The panel 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 Respondent to intend to attract Internet users “for commercial gain”, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent 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 Registrar to remove the parking page.”
Furthermore, in LEGO Juris A/S v. Floyd Goddard/ Oneandone Private Registration, WIPO Case No. D2010-0544 the disputed domain name contained a combination of two trademarks (LEGO and MINDSTORMS) the panel stated that “[t]he [p]anel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of the [c]omplainant’s trademarks and activities at the time of the registration of the disputed domain may be considered an inference of bad faith.
In Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 the panel stated “[i]t follows from what has been said about legitimacy that the [p]anel is satisfied that [r]espondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his website by creating a likelihood of confusion with [c]omplainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).” Consequently, the Respondent is using the domain names 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 websites.
Furthermore, as stated earlier, there is no disclaimer on the website explaining the non-existing relationship between the parties. Instead, a copyright text is displayed which rather confuses a visitor into believing that he, the Respondent, has rights in the domain names. In LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839 the panel stated that “[t]he bad faith of the [r]espondent may also be inferred through a simple logical process as well, in the sense that it would, indeed, be highly unlikely that the [r]espondent would come up randomly and unintentionally with a famous word, such as “LEGO”, and register it as its own domain name, in combination with the term “playsets.com” which directly relates to the products offered under the third party trademark.”
In addition, the Respondent would also qualify under the pattern of abusive conduct which involves a single case where the Respondent has registered multiple domain names which are similar to trademarks. In the current case, the Respondent has registered at least 4 domain names targeting the LEGO trademark. The Respondent has also registered other domain names including famous brands such as SHARP, SONY, SAMSUNG, GARMIN to name a few (see WhoIs for: <SonyBraviakdl46Ex720.org>, <sharplc60le632u.org>, <sonybraviakdl55hx820.org>, <garmin2595lmt.org> and <Samsungln40d630.org>). Such pattern of conduct is expressly forbidden by paragraph 4(b)(ii) of the Policy, see Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798.
To summarize, it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registrations. There is no connection between the Respondent and the Complainant. By using the disputed domain names the Respondent is not making a legitimate noncommercial 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 did not reply to the Complainant’s contentions.
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 previous UDRP cases in which the respondent failed to file a response, the panels’ decision 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.
The Panel finds that LEGO is at least a distinctive part of the disputed domain names <legoninjagofiretemple.org>, <legostarwarsmillenniumfalcon.net>, <legostarwarsadventcalendar.net>, <legospacecenter.net>. They comprise the word “lego”, and this word is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark in numerous countries around the world. LEGO is demonstrably a famous trademark. This has been confirmed in previous UDRP decisions. See, e.g., LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840: “LEGO is clearly a well-known mark” and beyond that through the list including the official top 500 Superbrands for 2009/2010, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.
The Panel finds that the addition of the suffixes “ninjagofiretemple”, “starwarsmillenniumfalcon”, “starwarsadventcalendar” and “spacecenter” do not serve to differentiate the disputed domain names from the use of LEGO alone. LEGO is instantly recognizable within the disputed domain names. 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. Though additions that the Respondent affixed to the trademark LEGO in creating the disputed domain names are not generic as such, they refer to actual previous products of the LEGO Group which rather amplify the confusion but resolving it, as it was also stated in LEGO Juris A/S v. school, WIPO Case No. D2011-0639.
Likewise, the addition of a generic top-level domain (gTLD) “.net” or “.org” 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 this Panel’s view, there may be 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 relationship between the Complainant and the Respondent. The trademark also risks being tarnished by being connected to the website of the Respondent. By using the trademark as a distinctive 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 to the Complainant’s trademark. Persons seeing the disputed domain names, even without being aware of the content, are likely to think that the disputed domain names are in some way connected to the Complainant.
The Panel finds that the disputed domain names are therefore 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.
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.
The Complainant represents that it has not found anything that would suggest that the Respondent has been using LEGO in any way that would give them any legitimate interests or rights in the name. It has not itself given any right to use the LEGO mark to the Respondent. As stated in Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, “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.” 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 in an appropriate manner to the Complaint.
Furthermore, it is highly unlikely that the Respondent was not aware of the fame of the mark LEGO due to the fact he is using copyright text at the bottom of the websites which rather gives the impression that the Respondent has rights in the trademark and products displayed on the website. In addition there is no disclaimer on the website. This was stated by the panel as a factor in finding an absence of respondent’s legitimate interest in Dr.Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312. Indeed, in the view of the Panel, the adoption by the Respondent of domain names confusingly similar to the Complainant’s trademark LEGO and at the same time referring to actual product names of the Complainant inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products, 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, without any right or legal justification for doing so.
The Respondent does not fulfill the requirements for a bona fide offering which can be claimed by a reseller, set out, inter alia, in the WIPO Overview 2.0, paragraph 2.3. In the present case, Amazon.com can be considered as the reseller and the Respondent just getting revenue when a visitor clicks through on the links provided by the Respondent. The panel in LEGO Juris A/S v. Suka LLC, WIPO Case No. D2011-1057 stated in such cases, that “no bona fide offering of goods and services can be found, when a site is using, without a license or authorization, a registered trademark as part of its name to indirectly solicit orders for products sold by others, even if the products finally sold are made by [c]omplainant.”
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, 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 online 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 in conjunction with actual names of products of the Complainant, 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.
Furthermore, given 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 Panel finds that 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 This 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 Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, the panel established that “given the notoriety of the [c]omplainant’s Deutsche Bank Mark, any use which the [r]espondents 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”.
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.
Again, the fact that there is no disclaimer on the website, but a copyright text on the bottom is an indication for bad faith in the Panel’s view. In accordance with LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839 the bad faith can also be inferred “through a simple logical process as well, in the sense that it would, indeed, be highly unlikely that the [r]espondent would come up randomly and unintentionally with a famous word, such as “lego”, and register it as its own domain name, in combination with the term “playsets.com” which directly relates to the products offered under the third party trademark.”
Also, even though not conclusive, the failure of the Respondent to reply to the Complainant’s cease and desist letter and reminder, 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 the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <legoninjagofiretemple.org>, <legospacecenter.net>, <legostarwarsadventcalendar.net>, <legostarwarsmillenniumfalcon.net> be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Dated: February 21, 2012