WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. CREATIVE MARKETING

Case No. D2010-1879

1. The Parties

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

The Respondent is CREATIVE MARKETING of New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legotrading.com> is registered with The Planet.com Internet Services Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 5, 2010, the Center transmitted by email to The Planet.com Internet Services Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2010, The Planet Internet Services Inc. 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 November 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2010. The Response was filed with the Center on November 17, 2010.

The Center appointed John Swinson as the sole panelist in this matter on December 7, 2010. 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. Response Deficiencies

The Response filed by the Respondent on November 17, 2010 consisted of an email addressed to the Center (copied to the Complainant and the Registrar) which included an attached letter addressed to the Center. Paragraph 5 of the Rules set out various requirements the Response must meet, including that it conclude with the following statement:

Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument .

The Response did not include this statement. The lack of such certification has been held to render a Response deficient (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). In this case the panel found that “without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the email”.

However in some cases, further circumstances have been taken into account to find that a response may be considered despite its deficiencies. In Backstreet Productions, Inc. v. John Zuccarini, Cupcake Party, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654, the Panel found that despite such failure, the Respondent may have been “lulled into a false sense of security because the Center did formally acknowledge receipt of the Response”. In the case at hand, the Center acknowledged receipt of the Response on November 18, 2010 and only requested that the case reference be corrected. As the facts contained in the Response do not affect the result of the Panel’s decision, the Panel is prepared to considered the Response (see Backstreet Productions, Inc. v. John Zuccarini, Cupcake Party, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654).

5. Factual Background

The Complainant is a company based in Denmark that produces construction toys under the brand LEGO. The Complainant has numerous trademarks for LEGO, including United States Trademark Registration No. 1018875, registered August 26, 1975 (LEGO word mark). LEGO is a very well known brand, in many countries around the world. It is recognised by people of all ages as the products have been in the marketplace for many decades. The LEGO brand is used for related products, such as the very successful Star Wars Lego computer games, which involves characters made out of LEGO bricks re-enacting Star Wars adventures.

The Respondent is marketing and public relations firm formed in 1974. In comparison with the Complainant, the Respondent is a small business.

The disputed domain name was registered on July 25, 2010. The Respondent stated that it plans to use the website resolving from the disputed domain name to provide a forum for people to trade used LEGO pieces (however trading has not yet commenced via the website). The website includes sponsored links (pay-per-click advertising).

6. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant is the owner of a trademark for LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant is the owner of United States Trademark Registration No. 1018875, registered August 26, 1975 (LEGO word mark), as well as registered trademarks in many countries around the world including Afghanistan, Austria, Brazil, China, France, Mexico and the United Kingdom. The Complainant is also the owner of more than 1000 domain names containing the term LEGO, including <lego.com>. The Complainant has a strict policy that all domain names containing the word LEGO should be owned by the Complainant.

The Complainant has authorised its licensees to use the Complainant’s intellectual property rights (including its trademark rights). The Complainant and its licensees (the “Lego Group”) commenced use of the LEGO trademark in the United States of America in 1953. Over the years, the business of making and selling LEGO branded toys has grown remarkably. LEGO products are now sold in more than 130 countries, including in the United States of America.

The trademark LEGO is among the most recognised trademarks in the world, due in part to decades of extensive advertising. Such advertising prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. LEGO is ranked 8th in the Superbrands list of the official top 500 “superbrands” for 2009/10.

The dominant part of the disputed domain name comprises the word LEGO which is identical to the Complainant’s registered trademark for LEGO. The disputed domain name is therefore confusingly similar to the Complainant’s world famous trademark. The fame of the Complainant’s trademarks has been confirmed in numerous UDRP decisions (see LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692 and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715). The addition of the suffix “trading” is not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, which is instantly recognizable as a world famous trademark. The addition of the top-level domain (“.com”) is irrelevant to determining “confusing similarity” between the trademark and the disputed domain name.

The Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has not found anything that would suggest that the Respondent has been using LEGO in any other way that would give them any legitimate rights in the name. The Complainant has not licensed or authorised the Complainant to use its LEGO trademark and in the absence of such license or permission from the Complainant, no actual or contemplated bona fide use of the disputed domain name could be claimed by the Respondent (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). Furthermore the Respondent is not an authorised dealer of the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312). The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name.

It is unlikely that the Respondent would not have known of the Complainant and its rights in the name LEGO when registering the disputed domain name. In fact, it is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic and income through sponsored links. In LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156 the panelist stated that the “Respondent’s use of the disputed domain name to sponsor links to paid advertising is not use of the disputed domain name in connection with a bona fide offering of goods or services”.

The trademark LEGO in respect of toys belonging to the Complainant has the status of a well known trademark, with a substantial and widespread reputation throughout the whole community and throughout the world. The considerable value and goodwill of the mark LEGO is most likely a large contribution to this and also what made the Respondent register the disputed domain name.

The Complainant previously tried to contact the Respondent via a cease and desist letter. The Respondent did not reply to this letter or to two reminders sent after the first letter. The failure of a respondent to respond to a cease and desist letter, or a similar attempt at 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 name is currently connected to a website containing sponsored links. Therefore the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. Whether or not the Respondent has influenced what links should be included on the site is irrelevant for the finding of bad faith in this case. It is also irrelevant whether or not the Respondent is actually getting revenue from the page itself or whether the revenue is going to a third party (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).

There is no disclaimer on the website identifying the Respondent’s relationship with the Complainant. There is a text on the bottom of the website that could be mistaken for a disclaimer, but it only gives information about LEGO. This could further mislead visitors to believe that the Complainant is behind this website. Consequently, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

B. Respondent

The Respondent did not directly respond to the Complainant’s contentions. However, as discussed above, the Respondent sent an email to the Center which stated the following:

The disputed domain name was registered at the request of the great-grandson of the President of the Respondent, who wanted to set up a website to expand on his hobby of trading used LEGO. Before registering the disputed domain name, the President of the Respondent conducted a USPTO trademark search for “legotrading”, finding only the uppercase trademark for LEGO.

In view of the fact that the Complainant’s policy is to own all domain names that include the word “Lego”, the Respondent offered to sell the disputed domain name to the Complainant for USD 75,000.

7. Discussion and Findings

To succeed, a complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied:

(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.

The onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of a registered trademark in the United States of America for the word mark LEGO (see United States Trademark Registration No. 1018875). For the Complainant to succeed in this element, it must show that the disputed domain name <legotrading.com> is identical or confusingly similar to the Complainant’s trademark for LEGO. It is well established that the suffix “.com” can be ignored for this purpose.

The disputed domain name contains the Complainant’s trademark in its entirety. The Panel agrees that the LEGO trademark is famous around the world and is and is an extremely well known brand. The addition of the word “trading” is purely descriptive and is not enough to distinguish the disputed domain name from the Complainant’s famous LEGO trademark (see LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260). Where there is a famous mark joined with an everyday term, it is difficult to say there is no confusion, as the famous mark is the most prominent and recognizable features. “Trading” is an act that can be performed in relation to LEGO branded products, therefore people are likely to believe the disputed domain name is operated by the Complainant (as owner of the famous mark). In any event, the incorporation of the LEGO trademark in its entirety in the disputed domain name is itself in this instance sufficient to satisfy this first element (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

For the reasons discussed above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s LEGO trademarks.

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant in this case is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent does not appear to have any registered trademarks or trade names corresponding to the disputed domain name. It is very unlikely that the Respondent could trade under the “Lego” name, having regard to the Complainant’s worldwide rights. Mere registration of a domain name does not give the Respondent a right or a legitimate interest in respect of the domain name. The Complainant has advised that it is not associated with the Respondent in any way, nor has it licensed or authorised the Respondent to use its LEGO trademarks or name at any time.

One of the ways that a respondent may demonstrate rights or legitimate interests in a disputed domain name is to show that, before any notice of the dispute, the respondent’s use of or demonstrable preparations to use the disputed domain name is in connection with a bona fide offering of goods or services (see paragraph 4(c)(i) of the Policy). In this case the Panel finds that although it appears that trading has not yet commenced via the Respondent’s website, the Respondent has at least shown (minimal) preparations to use the disputed domain name as a forum from which people may trade LEGO. However the Panel must determine whether such demonstrable preparations to use is in connection with a bona fide offering of goods or services (emphasis added) (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).

The Panel finds that the Respondent is unable to show that its demonstrable preparations to use the disputed domain name as a trading website is in connection with a bona fide offering of goods or services for the following reasons:

- the Respondent was obviously aware of the Complainant and its trademarks when registering the disputed domain name and must have been aware that such a domain name would attract Internet browsers looking for websites associated with the Complainant (see Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670);

- the Respondent’s website does not include a disclaimer to distinguish the website from an official website or a website associated with the Complainant (see Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481);

- at the bottom of the Respondent’s website (where one would normally find a disclaimer), a paragraph of information about LEGO appears (set out in the next paragraph) which suggests to consumers that the website is owned by, affiliated with or endorsed by the Complainant (this is because it contains factual information, which could typically be found in the “About Us” section on an official website); and

- the Respondent’s website includes sponsored links to paid advertising (see LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156).

The following is a reproduction of the statement set out on the Respondent’s website (as referred to above):

Lego (trademarked in capitals as LEGO®) is a line of construction toys manufactured by the Lego Group, a privately held company based in Billund, Denmark. The company's flagship product is called Lego.bricks and an accompanying array of gears, minifigures and various other parts. Lego bricks can be assembled and connected in many ways, to construct such objects as vehicles, buildings, and even working robots. Anything constructed can then be taken apart again, and the pieces used to make other objects. The toys were originally designed in the 1940s in Europe and have achieved an international appeal, with an extensive subculture that supports Lego movies, games, video games, competitions, and four Lego themed amusement parks.

Another way a respondent may demonstrate rights or legitimate interests in a dispute domain name is to show that it is making a legitimate non-commercial or fair use of the dispute domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark (see paragraph 4(c)(iii) of the Policy). The Panel acknowledges that in some instances, providing a forum for the exchange or trading of products may be considered a fair use of a disputed domain name. However the Respondent’s use of the site, which contains no disclaimer and fails to dismiss an association with the Complainant cannot be considered fair use as it is likely that users could be misled (see Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670). The Panel finds that the Respondent is also unable to demonstrate a non-commercial use due to the placement of sponsored listings on the Respondent’s website (see Baccarat SA v. Ichiro Watanabe, WIPO Case No. D2010-1493).

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Panel finds has not been rebutted by the Respondent.

Accordingly, the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances which if found by a panel shall be evidence of registration and use of a disputed domain name in bad faith.

It is clear that the Respondent was aware of the Complainant and the Complainant’s trademark when registering the disputed domain name. (In the email sent to the Center, the Respondent admits being aware of the Complainant’s trademark for LEGO).

While the Respondent plans to use the disputed domain name as a forum for people to trade used LEGO pieces, this is not its only use; the website is also used to advertise other products and services. Therefore, the Complainant contends that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites. The Respondent receives a “commercial gain” via the revenue it receives for the sponsored listings advertised on the website resolving from the disputed domain name. Such use has consistently found to be bad faith registration and use under paragraph 4(b)(iv) of the Policy where the disputed domain name relies on a famous trademark to attract users’ attention (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, LEGO Juris A/S v. Dealwave, WIPO Case No. D2010-0881 and LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156).

The Respondent has provided printouts of the website resolving from the disputed domain name that clearly show sponsored listings that refer to “lego” (however the text of the links is not in English). On one occasion when the Panel viewed the Respondent’s website from Australia, it contained sponsored listings for “Australia’s Largest LEGO” (at “www.bttw.com.au”), “Aussies: Buy LEGO Online” (at “www.JustBricks.com”) and “Lego On Sale @ Kmart” (at “www.Kmart.Catalogue.com.au”). When the first two links are selected, the user is taken to the corresponding websites, which clearly state that these companies are “authorised LEGO e-Commerce retailers”. Such advertisements further suggest to consumers that the website is affiliated with or endorsed by the Complainant (see a similar situation in LEGO Juris A/S v. Dealwave, WIPO Case No. D2010-0881, where the website contained sponsored listings for “Star Wars lego” and “lego city”).

As stated above, the Respondent’s website also includes statement about LEGO at the bottom of the page (as set out in full above). This statement, combined with the fact that there is no valid disclaimer on the Respondent’s website, is likely to mislead consumers that the Respondent is sponsored by or connected with the Complainant. Such use of the website without effort to differentiate the Respondent from the Complainant (and its worldwide reputation) is further evidence that the disputed domain name was registered and is being used in bad faith.

Finally the Complainant has argued that the Respondent’s failure to respond to its cease and desist letter or similar attempts at contact is an indication 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 Panel finds that, although it is not conclusive evidence, this failure can be an additional indication of bad faith (see LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 and Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670).

On the evidence available to it, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

Accordingly, the third element has been met.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <legotrading.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: December 21, 2010