WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Execucorp Management One, Inc.
Case No. D2012-0062
1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Execucorp Management One, Inc. of Florida, United States of America (the “U.S.”).
2. The Domain Name and Registrar
The disputed domain name <lego-buildings.com> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 16, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On the same date, 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2012.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on February 21, 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.
4. Factual Background
The Complainant, LEGO Juris A/S, is a manufacturer of toys which started using the trademark LEGO in Denmark in the 1940s, and in the U.S. in 1953. It owns numerous word and word/device trademarks LEGO, registered in many countries in particular in class 28 for toys, for example: Community trademark LEGO, registration No. 000039800, registered for goods in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41 and 42, and US trademark LEGO, registration No. 1018875, registered in class 28. Most, if not all, of the trademarks registered by the Complainant pre-date the Domain Name. The Complainant also holds numerous domain name registrations incorporating the word “lego”, such as <lego.com>, <lego.eu>, <lego.co.uk>, etc.
The Domain Name <lego-buildings.com> was registered with the registrar GoDaddy.com, LLC on February 11, 2011. The website to which the Domain Name resolves contains sponsored links to websites offering LEGO toys as well as toys of other trademarks such as PLAYMOBIL and other unrelated products.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its – allegedly famous – trademark LEGO. It stresses the facts that the Domain Name entirely comprises the trademark LEGO, that the gTLD suffix “.com” is not distinctive and should not be taken into account in the analysis, and that the descriptive word “buildings” contained in the Domain Name is irrelevant because not distinctive.
Furthermore, the Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the Domain Name because it is not known under the name “lego” and because there is strictly no business connection between the parties, and in particular because the Complainant did at no time grant the Respondent any right to use the Domain Name. The Complainant contends that the Respondent registered the Domain Name in order to generate traffic to various online shopping websites.
At last, the Complainant argues that the Respondent has registered and is using the Domain Name in bad faith. It submits that, given the notoriety of the LEGO trademark, the Respondent intentionally registered the Domain Name without authorisation to re-direct Internet users, for commercial gain, to websites at which LEGO and competitive and/or non-competitive products can be purchased. The Complainant also sees an indication of bad faith in the absence of response to its cease and desist letter and subsequent reminders.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
A. The Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds several word and word/device trademarks for LEGO which are registered, among other things, for toys in class 28, in particular in Europe and in the U.S.. In the present proceedings, Complainant puts forward the U.S. trademark No. 1018875 (word trademark), registered in 1975, and provides a list of LEGO registrations worldwide. The excerpt concerning the aforementioned U.S. trademark indicates that the first use of the trademark took place in 1953. The trademark registrations put forward by the Complainant are sufficient to found the Complaint.
The Domain Name is <lego-buildings.com>.
Under the UDRP, the identity or confusing similarity requirement under paragraph 4(a) of the Policy only requires identity or confusing similarity between the Complainant’s trademarks and Respondent’s domain name. In particular, there is no requirement of similarity of goods and/or services (e.g. AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485, <vincotte.com> et al.).
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy makes no doubt in the present case, given that the distinctive element in the Domain Name, i.e. “lego” is identical to the Complainant’s trademarks. The other elements of the Domain Name, i.e. the generic word “buildings” and the gTLD suffix “.com”, which has a technical function, are not sufficient to avoid confusing similarity (e.g. Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (<nokiagirls.com>) and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (<rollerblade.net>)).
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in the Domain Name. Complainant has shown that it owns LEGO trademarks, and it has explicitly contested having granted the Respondent any right to use its trademarks. Whether LEGO is a famous trademark or not does not need to be established here, it being sufficient to state that the trademark LEGO is well-known. It seems obvious that this is in particular the case in the U.S., where the Respondent is located, which is supported by the uncontested fact that the Complainant’s trademark LEGO was first used in the U.S. in 1953. Therefore, the Complainant made a prima facie showing that the Respondent must have known about the Complainant’s trademark when registering the Domain Name, and that its intention was to take advantage from the well-known LEGO trademark. Furthermore, the Respondent cannot argue that the disputed Domain Name was being used for legitimate noncommercial or fair use purposes, as it is using the Domain Name to direct the public to online shopping websites, such as “www.spielwarenmedia.ch”, “www.3000toys.com”, etc., where LEGO products, but also products of the Complainant’s competitors as well as totally unrelated products are offered for sale, all the more that it seems very likely that the Respondent receives commercial revenue from the display of links to the aforementioned online shopping sites (Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038 (<baccaratjewelry.com>). For this reason, there is not either a bona fide offering of goods or services according to paragraph 4(c)(i) Policy (Baccarat SA v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0953 (<mybaccaratcrystal.net> et al.).
Under these circumstances, the burden of production, although initially lying with the Complainant, shifts to the Respondent who has to demonstrate its rights or legitimate interests in the Domain Name (Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>). Not having filed any response, the Respondent has failed to make such demonstration.
The Panel thus finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
It results from the Panel’s factual findings that the Respondent primarily registered and is using the Domain Name to display links to online shopping websites which offer not only the Complainant’s products, but also competitors’ as well as totally unrelated products, and that it thereby intends to generate commercial revenue. The Panel therefore finds that by using the Complainant’s trademark as the distinctive element of the Domain Name, the Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by the Complainant or by one of its retailers. In any case, the visitors will have the impression that the websites to which the Domain Name resolves is associated with, or endorsed by, the owner of the LEGO trademark, i.e. the Complainant. The fact that the links displayed on the website to which the Domain Name resolves, redirect the user to online shopping websites, where the Complainant’s, its competitors’ and totally unrelated products are offered for sale, shows bad faith conduct on the Respondent’s part (e.g. Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911, <deceunick.com>).
The Panel thus finds that the Respondent registered and is using the Domain Name to intentionally 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 website (paragraph 4(b)(iv) of the Policy).
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 <lego-buildings.com> be transferred to the Complainant.
Dated: February 23, 2012