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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Tanawat Tongwan

Case No. D2016-1594

1. The Parties

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

The Respondent is Tanawat Tongwan of Songkhla, Thailand.

2. The Domain Name and Registrar

The disputed domain name <legominifig.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2016. On August 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2016.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 31, 2016. 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.

4. Factual Background

The Complainant is a limited liability company incorporated and based in Denmark, which operates in the toys sector. It is best known for the manufacture of LEGO brand toys, consisting mostly of interlocking plastic bricks, which are commercialized by the Complainant, its licensees or subsidiaries throughout the world, in more than 130 countries, including Thailand. The Complainant has also expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets, and operates several retail stores as well as a commercial website at “www.lego.com”.

The Complainant uses the mark LEGO to identify its products, its stores and website, holding several trademark registrations throughout the world containing or consisting of this word alone or in combination with other denominative or device elements. In Thailand, the Complainant holds Trademark Registration No. KOR78.605 LEGO in class 28, which was registered on July 23, 1979.

Further, the Complainant uses the mark MINIFIGURES to identify some of its products and services, holding

European Union Trademark Registration No. 13.570.932 MINIFIGURES (Figurative mark) in classes 9, 16, 25, 28, 35 and 41, which was applied for on December 15, 2014 and registered on April 16, 2015, as well as United States of America Trademark Application No. 86651986 MINIFIGURES (Figurative mark) in classes 9, 16, 25, 28, 35 and 41, which was applied for on June 4, 2015 and published for opposition on July 19, 2016.

Furthermore, the Complainant is the owner of close to 5,000 domain names incorporating the mark

LEGO alone or in combination with other terms, and, particularly, some incorporate both marks, LEGO and MINIFIGURES, or abbreviations of the last (<legominifigs.com>, <legominifgs.co.uk>, <legominifigure.com>, <legominifigure.co.uk>, <legominifiguren.info>, <legominifigures.com>, <legominifigures.info>, <legominifigures.net>, <legominifigures.at>, <legominifigures.be>, <legominifigures.ca>, <legominifigures.ch>, <legominifigures.cn>, <legominifigures.co.uk>, <legominifigures.co.za>, <legominifigures.co.ar>, <legominifigures.com.au>, <legominifigures.com.ua>, <legominifigures.cz>, <legominifigures.dk>, <legominifigures.ee>, <legominifigures.es>, <legominifigures.fr>,<legominifigures.ie>, <legominifigures.it>, <legominifigures.pl>, <legominifigures.pt>, <legominifigures.ro>, <legominifigures.se>, <legominifigures.si>, <legominifigures.sk>, <legominifigures.tv>, <legominifigures.us>, etc.).

The disputed Domain Name was registered on January 30, 2016 and resolves to a pay-per-click (“PPC”) advertising website with links to a variety of commercial and informational websites, including links related to LEGO games as well as to other brand games and unrelated services like dating and chat services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its mark LEGO, for which it claims well-known character and reputation, and its mark MINIFIGURES. The disputed Domain Name incorporates both marks, LEGO as its most dominant beginning element, followed by the term “minifig”, which may be considered as an abbreviation of MINIFIGURES. It creates a clear likelihood of confusion and association with the Complainant’s well-known trademark LEGO and its product line “Lego Minifigures” (a theme based on a set of collectible LEGO mini figures introduced in 2010), which is not avoided by any additional element or the inclusion of any disclaimer in the Respondent’s website.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed Domain Name. No license or authorization has been given by the Complainant to the Respondent, to use the trademark LEGO. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant, no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, and the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.

Instead, the Complainant infers from the PPC website associated with the disputed Domain Name that the Respondent registered and used the Domain Name in bad faith, in an attempt to mislead Internet users and exploit the Complainant’s well-known mark for commercial gain, in order to generate traffic and income through a website that is commercial through sponsored links.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The first element of the Policy concerns only the identity or confusing similarity of the Domain Name and a mark in which the Complainant currently has rights, comparing the mark and the Domain Name objectively in appearance, sound, meaning and overall impression, and in cases involving slight differences in punctuation or spelling, UDRP panels regularly find sufficient similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.

The Complainant indisputably has rights in the registered marks LEGO and MINIFIGURES. The Domain Name is nearly identical to the combination of both marks, omitting only the last syllable and the vocal “u” of the word “figures” in the trademark MINIFIGURES, “fig” being the normal abbreviation of the word “figures”.

The Panel finds that the Domain Name is visually and phonetically confusingly similar to the Complainant’s marks. It reproduces and incorporates as the most dominant first element, the Complainant’s mark LEGO followed by the normal abbreviation of another trademark owned by the Complainant and related to the first mark LEGO. Therefore, the Panel concludes that this element of the Policy has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Here, the Complainant relies on the fact that it has not granted any authorization or license to the Respondent and there is no evidence that the Respondent has any other right or used the Domain Name for anything but a PPC website, which in some instances advertised competing online games. This effectively shifts the burden to the Respondent to demonstrate rights or legitimate interests in the Domain Name. However, the Respondent has neither replied to the Complainant’s cease and desist letter and reminders, nor to the Complaint.

Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder, and where such links are based on trademark value. UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion. Paragraph 2.6, WIPO Overview 2.0.

On the present case, the Panel does not find any evidence that the Respondent has any rights or legitimate interests in the Domain Name to rebut the Complainant’s prima facie case to the contrary. The Domain Name is used on a PPC website providing links to the Complainant’s goods together with some links to competing products or to unrelated goods and services. Those links are based on the value of the trademark LEGO, which has acquired worldwide reputation due to its extensive use and advertising, and clearly take unfair advantage of and dilute the said acquired distinctiveness and reputation. Therefore, the Panel concludes that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), obliges the Complainant to establish that the Domain Name “has been registered and is being used in bad faith”.

At the time of registration, due to the worldwide well-known character of the trademark LEGO accredited by the Complainant and its extensive presence over the Internet, it is very difficult that the Respondent did not know about this trademark and registered the Domain Name not having in mind this famous mark. Especially considering that the Domain Name also adds the words “minifig”, which clearly refers to the type of products identified by the famous mark LEGO and one of its product lines.

Further, the Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

As the Complainant argues and the Panel has ascertained, this is precisely how the Respondent has used the Domain Name, associating it with a PPC advertising service that prominently features links to the Complainant games and those of its competitor’s as well as other unrelated goods and services, without including any disclaimerproviding information that may avoid the clear likelihood of confusion with the Complainant’s mark.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and uses the Domain Name in bad faith to exploit and take unfair advantage of the reputation of the Complainant’s mark.

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 Domain Name <legominifig.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: September 16, 2016

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