The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Christopher Olmos of Irvine, California, United States of America (“USA”).
The disputed domain names <legotechnicneuheiten.com>, <legotechnicneuheiten.net> and <legotechnicneuheiten.org> are registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2013. On February 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 13, 2013, the Registrar 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 February 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2013.
The Center appointed J. Nelson Landry as the sole panelist in this matter on March 15, 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 Complainant is a manufacturer of construction toys which are marketed under the trademark LEGO and have been so promoted and sold in the USA since 1953 as well as in a major number of countries around the world. It has registered the trademark LEGO alone or in combination with different words, such as LEGO TECHNIC, as it appears from the list of more than 100 countries and the registrations in the USA, adduced in evidence as Annexes 6, 6.1 and 6.2 of the Complaint (herein the “LEGO Trademarks”).
In addition to its own activities, the Complainant has granted licenses to authorize other companies to exploit its intellectual property rights including its LEGO Trademarks rights in the USA and in other countries (herein the “LEGO Group”). The Lego products are sold in more than 130 countries including the USA and such sales have generated in 2009 more than USD 2.8 billion for the LEGO Group.
The Complainant is also the registered owner of more than 2,400 domain names, each of which contains the term “Lego” as evidenced by their long list (46 pages, Annex 8 of the Complaint). According to the Complainant, the latter wants to own each domain name which contains the term ”Lego”. The LEGO Group also maintains an extensive website under the domain name <lego.com> (Annex 10 of the Complaint).
The Complainant has not given any license or authorization of any kind to the Respondent to use any of its LEGO Trademarks or register and use any of the three disputed domain names which were registered on December 11, 2012. Furthermore the Respondent is not an authorized reseller of Lego products of the Complainant. In each of the three disputed domain names, the German suffix “technicneuheiten” is a German expression which means “technic news”.
The Respondent operates an active website for two of the disputed domain names, <legotechnicneuheiten.net> and <legotechnicneuheiten.org>, and the domain name <legotechnicneuheiten.com> is being inactive. Upon clicking on the active links, the Internet visitor is redirected to the “www.amazon.com” website on which there are Lego products offered for sale and a full range of other products not related or emanating from the Complainant. There is no disclaimer on the Respondent’s active websites in respect of the Respondent not being an authorized distributor of the Lego products of the Complainant or of a member of the LEGO Group.
On January 10, 2013, the Complainant first forwarded a cease and desist letter to the Respondent advising same of the violation of its LEGO Trademarks by the unauthorized use of the LEGO Trademarks in registering and using the disputed domain names, requested the transfer of the three disputed domain names and offered compensation for the out of pocket expenses for their registration and renewal fees. Two reminders were sent, one on January 15, 2013 and the other on February 4, 2013. The Complainant did not receive any response from the Respondent.
Notwithstanding the forwarding of these letters, the “www.amazon.com” website, to which visitors are redirecting when one is trying to reach a website at a disputed domain name, and on which website Lego products and a full range of other products are offered for sale, has not changed in nature before or after the notice through the said cease and desist letter and reminders and there is no disclaimer to dissociate these websites from the Complainant and LEGO Group’s activities.
The Complainant submits that the three disputed domain names are confusingly similar with its well known LEGO Trademarks in which it has significant rights and distinctive character. According to the Complainant, the addition of the suffix “technicneuheiten” which means “technic news” does not impact at all on the overall impression of the dominant part namely, its world famous LEGO Trademark. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.
Furthermore, the addition of the top level domain suffix “.com”, “.net” and “.org” does not have any impact on the above mentioned dominant portion of the disputed domain names and do not diminish the confusing similarity between the LEGO Trademarks and the disputed domain names since anyone seeing any of the disputed domain names will mistakenly believe that they are related to the Complainant through some kind of commercial relationship with the Complainant.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names since the Respondent has no registered trademarks or trade names corresponding to the disputed domain names. This is further confirmed by the absence of any license or permission from the Complainant to use its LEGO Trademark and the fact that the Respondent is not an authorized dealer of the Complainant’s products, this having already been considered by an earlier panel as a factor in finding non legitimate interests for a respondent. See Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
The Complainant contends that in view of its worldwide famous LEGO Trademarks, it is unlikely that the Respondent would not have known of the Complainant’s rights in the term “Lego” at the time of registration of the disputed domain names and was rather aware of the Complainant’s rights in it. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
Upon observing that the Respondent has intentionally chosen the disputed domain names based on the LEGO Trademarks in order to generate traffic on its at least two active websites with online shopping ultimately linking visitors to “www.amazon.com” website to do actual purchases, according to the Complainant, this cannot constitute use of the disputed domain names in connection with a bona fide offering of goods or services. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.
The Complainant further contends that its well known LEGO Trademark is enjoying a substantial and widespread reputation throughout the world is confirmed by the increasing number of third parties unauthorized domain name registrations comprising the trademark LEGO in combination with other words, namely several complaints before WIPO in the past three years.
According to the Complainant, bad faith of the Respondent in registering and using the disputed domain names is further confirmed by the lack of response by said Respondent to the initial cease and desist letter and two subsequent follow up letters by the Complainant. This absence of response to a cease and desist letter has already 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.
Finally, the Complainant further contends that using the disputed domain names to generate traffic to online shopping sites such as the “www.amazon.com” website to which an Internet user is redirected and where not only Lego products are for sale but a full range of other products, supports its contention of the use of the disputed domain names in bad faith. See Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain names registered by the respondent 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.
The Complainant, as outlined in the facts in the present case which are not disputed, has clearly shown that it has rights in the LEGO Trademarks registered in more than hundred countries including the USA, where the Respondent resides, and where the date of first use is 1953 and furthermore, the rights it has in the LEGO TECHNIC trademark, also registered in the USA in 1995 pursuant to a first 1986 use, as shown in the registration document (Annexes 6, 6.1 and 6.2 of the Complaint).
The Complainant has also shown and adduced in evidence the list of the 2,400 domain names incorporating the LEGO Trademarks. The Panel considers that the Complainant has rights in not only the trademark LEGO but also in numerous other trademarks incorporating the term Lego and other descriptive terms such as “technic” to constitute a family of LEGO Trademarks.
Each of the disputed domain names incorporates the whole of the Trademarks LEGO and LEGO TECHNIC trademark to which there were added, first the descriptive term “neuheiten” which combined with the term “technic” means “technic news” in German, and the generic top level domains “.com”, “.net” and “.org”. The Panel agrees with panels in previous UDRP decisions cited by the Complainant that the addition of these descriptive terms and TLD suffix does not alter or diminish in any way the confusing similarity between the Complainant’s LEGO Trademarks and each of the three disputed domain names. An Internet searcher or visitor, upon seeing those disputed domain names is most likely to consider and believe that they are part of the family of LEGO Trademarks.
The Panel finds that the Complainant has rights in the LEGO and LEGO TECHNIC trademarks and that each of the disputed domain names is confusingly similar therewith.
The first criterion of the Policy has been met.
The Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names by stating that the Respondent has never been known by the disputed domain names, is not making a legitimate noncommercial or fair use of the disputed domain names. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademark or to register the disputed domain names. The Complainant further states that it has not found any trademark registration or trade name corresponding to the disputed domain names or any other facts or information suggesting any use of the term “Lego” by the Respondent.
Upon considering that the term “Lego” is a coined word without any specific meaning, its registration as LEGO Trademarks worldwide and its use in the USA for nearly sixty years and the LEGO TECHNIC trademark for more than 25 years, this Panel agrees with the Complainant that it is unlikely that the Respondent would not have known of the Complainant’s LEGO Trademarks and of its famous character when the disputed domain names were registered on December 11, 2012.
In the absence of any evidence of contractual relationship with the Complainant and in particular any authorization to act as an authorized retailer, distributor or reseller, there is no justification to consider that the Respondent is an authorized reseller of the Complainant’s products.
The Complainant has clearly demonstrated through prima facie evidence, not rebutted in any way nor any attempt of rebuttal, that the Respondent has no rights or legitimate interests in respect of each of the disputed domain names and the Panel so finds.
The second criterion of the Policy has been met.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The evidence adduced by the Complainant in this case and in this kind of proceedings is impressive to clearly show and establish that the LEGO Trademarks are famous. The Complainant, in addition to showing the volume of business under its LEGO Trademarks on a worldwide basis, has also shown that for 2009-2010, its trademark LEGO ranks as number 8 within the top 500 super brands (Annex 9 of the Complaint).
The Panel, upon considering this fame, the long standing use and the new term “Lego”, is convinced that the Respondent was well aware of the existence of the LEGO Trademarks and the products associated with and sold under this famous trademark when the disputed domain names were recently registered.
Accordingly, the Panel finds that the disputed domain names were registered in bad faith.
The Complainant has shown relevant pages of the active websites of the Respondent and of the “www.amazon.com” website to which an Internet visitor is redirected upon searching for a website at the address of the disputed domain names. The said relevant pages demonstrate that there are offered for sale to the Internet visitors some products that are not related to the Complainant in addition to offering for sale LEGO trademarked goods presumably made by the Complainant or the LEGO Group. It is significant to observe that there is no disclaimer on any of the said websites to inform the visitor that the Respondent is independent and does not claim any king of relationship with the Complainant.
It is clear to this Panel that the Respondent is trying to benefit from the confusion created by the presence of the famous term “Lego” within the disputed 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 LEGO Trademarks as to the source, sponsorship, affiliation or endorsement of its website.
This Panel concurs with the finding of the panel in the Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946, which came to the same conclusion in a similar situation. The bad faith use is further confirmed in this Panel’s view by the fact that there was no response by the Respondent to the cease and desist letter and the follow up reminders and furthermore that the websites were not modified in any way before subsequent to the reception of the said cease and desist letter from the Complainant.
The Panel finds that the disputed domain names were used in bad faith.
The third criterion of the Policy has been met.
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 names <legotechnicneuheiten.com>, <legotechnicneuheiten.net> and <legotechnicneuheiten.org> be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Date: March 29, 2013