WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC

Case No. D2012-2462

1. The Parties

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

The Respondent is Kim Bum LLC of Seoul, Republic of Korea / PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Name and Registrar

The disputed domain name <legofrieds.com> is registered with RegisterMatrix.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2012, the Registrar 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 December 20, 2012 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 December 20, 2012.

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 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2012.

The Center appointed Christian Schalk as the sole panelist in this matter on February 1, 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. The language of the proceedings is English.

4. Factual Background

The Complainant is one of the most well known manufacturers of construction toys in the world. It markets its products already for decades in many countries of the world. In 2009, the Complainant sold its products under the trademark LEGO through its subsidiaries and branches in more than 130 countries and gained more than USD 2.8 billion in revenue. In accordance with a survey of Superbrands UK, the Complainant’s LEGO trademark has been ranked as number 8 of the most famous trademarks and brands in the world.

In the last decade, the Complainant has expanded its use of the LEGO trademark also to computer hardware and software, books, videos and computer controlled robotic construction sets.

The Complainant owns trademark rights in the term LEGO as a word mark in more than hundred countries, for instance,

- Danish Trademark No. 604-1954, LEGO, Registration date May 1, 1954, covering goods in Int. class 28;

- German Trademark No. 695755, LEGO, Registration date October 10, 1956, covering goods in Int. class 28;

- Finland Trademark No. 310363, LEGO, Registration date March 25, 1957, covering goods in Int. class 28;

- Australian Trademark No. B 129258, LEGO, Registration date January 16, 1960, covering goods in Int. class 28;

- Republic of Korea Trademark No. 66677, LEGO, Registration date January 21, 1980, covering goods in Int. class 28;

- European Community Trademark No. 39800, LEGO, Registration date October 5, 1998, covering goods and services in Int. classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42;

Several Panels in UDRP cases have considered the Complainant’s LEGO trademark as a well-known trademark (see, for instance, LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260).

The Complainant is also the owner of more than 2,400 domain names containing the term LEGO, among these <lego.com> under which it maintains an extensive website. This website contains several theme related sub-websites such as “Lego Universe”, “Lego City” and “Lego Friends”. These sub-websites are linked with the main entrance page through a system of third level domains. One of these third level domain names is the term “friend” (<friends.lego.com>) which provides access to the “LEGO friends” sub-website. This site is apparently designed for young girls and offers products as well as interactive games.

The Respondent registered the disputed domain name on September 12, 2012. In accordance with the material brought before the Panel, the disputed domain name was linked on December 14, 2012, inter alia, to the website of a Swedish online store which sells among others also the Complainant’s products. The design of this website is similar to the design used by the Complainant for its websites. On January 7, 2013, the disputed domain name was apparently linked to another website. Its design was different from the design used on the first website and displayed a list of “Sponsored Links”. Some of these links were in German language apparently linked to websites providing different kind of online games, language- and management courses and an online store for lamps. However, there are also two links called “Saai Legofriends” and “Lego Friends”.

The Complainant sent a cease and desist letter to the Respondent on October 26, 2012. Since the Respondent did not show any reaction, the Complainant sent reminders on November 5, 2012 and November 20, 2012 which both remained unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues in this context, that the dominant part of the disputed domain name comprises the word “Lego” which is identical to the Complainant’s trademark registration for the term LEGO. As far as the suffix “frieds” is concerned, the Complainant contends that this suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant. The Complainant explains further that the term “LEGO friends” is one of the Complainant’s product lines.

The Complainant asserts further that by using the Complainant’s LEGO trademark as dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage for this trademark.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Complainant does not own any registered trademark or trade names corresponding to the disputed domain name and also does not have anything that would give him any rights in the disputed domain name.

The Complainant contends also that the Respondent has neither a license nor any other authorization given by the Complainant to use its trademark LEGO. In addition, the Respondent is also not an authorized dealer of the Complainant’s products and had never a business relationship with the Complainant. The Complainant believes further that the Respondent was aware of the Complainant’s LEGO trademark when it registered the disputed domain name.

Furthermore, the Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because the Respondent has intentionally chosen the disputed domain name in order to generate traffic to web sites displaying sponsored links. Therefore, the Complainant concludes that the Respondent is using the Complainant’s LEGO trademark in order to mislead Internet users to commercial web sites for its own commercial gain. In this context, the Complainant argues, that the use of sponsored links does not constitute a bona fide use of the disputed domain name. In this context, the Complainant cites LEGO Juris A/S v. J.h.Ryu, WIPO Case D2010-1156, in order to support its arguments.

Moreover, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. In this context, the Complainant argues that the Respondent must have been aware of the Complainant’s trademark in the term LEGO given its high reputation and its notoriety.

The fact that the Respondent did not reply to the Complainant’s cease and desist letters and its subsequent reminders is for the Complainant a clear indication of bad faith behavior. In this context, the Complainant cites 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. D2000-1508, and America Online Inc., v. Antonio R. Diaz, WIPO Case No. D2000-1460, to support its arguments.

The Complainant believes further, that the use of sponsored links by the Respondent is also a factor indicating bad faith. It is the Complainant’s view that such links are under some circumstances permissible where domain names are consisting of dictionary or common words or phrases and where such sponsored links are related to the generic meaning of the relevant domain name. In this case, however, the Complainant is convinced that the only purpose of this registration of the disputed domain name by the Respondent is, to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

The Panel shall decide a 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the term LEGO. Aditionally, the disputed domain name is not identical to the Complainant’s mark.

However, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark. In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.)

In this case, the term “frieds” as an obvious misspelling of “friends” is obviously a generic term in English language. Its meaning is well-known even to people having only a limited knowledge in this language. Given the fact that the term “friends” in combination with the term “lego” stands for a certain product range of the Complainant and that the Complainant’s product are well known even to the Panel, it is more than likely that the domain name could be understood by Internet users finding <legofrieds.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or at least being sponsored by the Complainant and thereby increases the likelihood of confusion (see also Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956; Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti, WIPO Case No. D2001-0231). This is especially the case for children, the Complainant’s main customers. They are well aware of the different product groups and the names related to it.

The “com” suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with the term “lego” in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the material the Complainant has brought before the Panel, constituting a prima facie case that the Respondent lacks rights or legitimate interests and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.

The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the disputed domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554) by directing the disputed domain name to its own website where it provides a number of sponsored links, which relate to different products and services to those offered by the Complainant in addition to sponsored links related to construction toys. The Panel believes that the only reason why the Respondent registered and used the disputed domain name was to redirect Internet traffic intended for the Complainant away from it to the Respondent’s website with the intention to create income for the Respondent. In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter and subsequent reminders to it.

The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met.

C. Registered and Used in Bad Faith

The Complainant contends that the respondent registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:

(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 of a product.

According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.

Given the fact that the disputed domain name was initially directed to a website which provided links to a company selling the Complainant’s products the Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). This is also because the Complainant’s construction toys, marketed under the LEGO mark are well known already to several generations of children. Those who are not children any more become continuously reminded on these products not only by own children but also by the Complainant’s flagship stores in shopping malls, airports, train stations or at least by its extensive advertising in the media. For all this, the Panel believes that the Respondent registered the disputed domain name in bad faith.

The Panel finds further that the Respondent is also using the disputed domain name in bad faith.

The Respondent registered the disputed domain name, which differs from the Complainant’s trademark LEGO only by adding the term “frieds”. The Panel finds that this term is an obvious misspelling of the generic term “friends” which can easily occur when typing quickly the term “friends” in the computer. Therefore, the Panel is convinced that the Respondent’s intention is to confuse Internet users with the term “friends”. Given the fact that the disputed domain name is nearly identical with the name of a product range of the Complainant for young girls, it is very likely that Internet users believe that they get directed to a website of the Complainant. In this context, it has to be mentioned that Internet users, who search for products and/or services of the Complainant, do often type freestyle addresses that combine trademarks and descriptive words (for instance, “Lego” and “friends”) hoping to narrow down their search results. Subject of the links provided on the website to which the domain name resolves, were first a Swedish toy store and later links to websites offering online games and services apparently in the field of education.

Furthermore, the likelihood for confusion is extremely high because the Complainant uses its LEGO trademark as a domain name under the gTLD “.com” (<lego.com>) for its main entrance website and the term “friends” as a sub-domain or third level domain to the <lego.com> domain name. This could lead Internet users to believe that the first website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant and that everything they do will be at the end to the benefit of the Complainant and not of the Respondent.

It is the same with the later version of the Respondent’s website on January 7, 2013. The Complainant markets under “LEGO friends” not only a certain range of its construction toy products but offers also online games where its products, especially the Lego-figures are involved. Since Internet users seeking for the Complainant’s products are mainly young children, it is more than likely that they will click on such links expecting to get directed to games of the Complainant.

The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). Furthermore, the Respondent’s behaviour may also enable others, especially competitors of the Complainant, to take advantage of the fact that Internet users are directed to their website instead of the Complainant’s website. The only reason for this would be the infringement of the Complainant’s trademark rights by the Respondent which allows apart from the Respondent also a third party to reap the profit of such wrongful conduct (see also Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).

The Respondent has showed this attitude against the Complainant also in another case where it registered as well a domain name confusingly similar to the Complainant’s LEGO trademark. In LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-2025, the Respondent had registered the domain name <legosongs.com> which was directed as well to a website displaying sponsored links. Also in this case, the Panel held for bad faith registration and use of the disputed domain name of that case and therefore, ordered its transfer to the Complainant.

Therefore, the Panel believes that the only purpose of the registration of the disputed domain name was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In the Panel’s opinion, another indication for bad faith use in the present circumstances (and apparently also in LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-2025) is that the Respondent has not responded to the Complainant after receipt of the Complainant’s cease and desist letter but continued its behaviour even after the Complainant had filed its Complaint with the Center.

Given all facts and circumstances of this case, the Panel finds therefore, that the disputed 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 disputed domain name <legofrieds.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: February 15, 2013