WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd

Case No. D2009-0564

1. The Parties

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

The Respondent is Mohamed Ouattara / Integral Assets Ltd of Ouagadougou, Burkina Faso / Basseterre, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <legoeducation.info> (hereafter the Domain Name) is registered with Webagentur.at Internet Services GmbH d/b/a domainname.at.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2009. On April 30, 2009, the Center transmitted by email to Webagentur.at Internet Services GmbH d/b/a domainname.at a request for registrar verification in connection with the disputed domain name. On May 5, 2009, Webagentur.at Internet Services GmbH d/b/a domainname.at transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2009 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 May 6, 2009. 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 May 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 28, 2009.

The Center appointed Jon Lang as the sole panelist in this matter on June 5, 2009. 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 the owner of the trademark LEGO and several other trademarks used in connection with the LEGO brand in connection with construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights around the world. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States in 1953, to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953.

The Complainant is also the owner of more than 450 domain names containing the term LEGO and has more than 15 domain names registered including the term “LEGOeducation”.

The trademark LEGO is among the most recognized trademarks around the world. Indeed, the book, The World's Greatest Brands, published by MacMillan Business in 1996, lists LEGO as one of the most famous trademarks and brands in the world.

The LEGO Group has expanded its use of the LEGO trademark to, amongst other things, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group maintains an extensive website under the domain name <LEGO.com>.

LEGO Education is an official division within the LEGO Group.

5. Parties' Contentions

A. Complainant

- The dominant part of the Domain Name comprises the word LEGO, which is identical to the trademark LEGO, which has been registered by the Complainant as a trademark (and used in domain names) in numerous countries all over the world;

- The domain name is confusingly similar to the Complainant's trademark LEGO despite the suffix “education”;

- The addition of the top-level domain “info” does not have any impact on the overall impression of the dominant portion of the Domain Name;

- The Domain Name is bound to be mistakenly related to the Complainant. There is a likelihood of confusion including an obvious association with the trademark of the Complainant;

- The Complainant's trademark is at risk of being tarnished by being mistakenly connected to the website to which the Domain Name resolves;

- The Respondent has no registered trademarks or trade names corresponding to the domain name and has not been using the LEGO trademark in any other way such that would give them any rights or legitimate interests in the domain name;

- No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO;

- The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant;

- It is highly unlikely that the Respondent would not have known of the Complainant's rights in the name LEGO at the time of registration of the Domain Name suggesting that it is the fame of the trademark that has motivated the Respondent to register the Domain Name;

- The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent has intentionally used the LEGO trademark to generate traffic to a website and generate income through sponsored links;

- The Respondent owns 3939 other domain names, which indicates that the Registrant is a so called “Domainer” or “Cybersquatter”. The Domain Name is listed for sale at “www.sedo.com” as many other domain names owned by the Respondent are. The offering for sale of a domain name cannot be considered a bona fide use;

- The Complainant states that, on October 15, 2008, a cease and desist letter was sent to the registrant listed in the Whois database requesting immediate transfer of the Domain Name. The Complainant did not receive any response and therefore, on October 22, 2008 a reminder was sent. The Complainant has not received a reply from the Respondent to that letter either;

- The Domain name currently resolves to a website containing sponsored links and thus the Respondent is using the 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 that website. The “commercial gain” does not need to be derived by the Respondent itself.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is:

(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that he (the respondent) has no rights or legitimate interests in respect of the domain name; and

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

A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

Given that the word “lego” forms the first four letters of the Domain Name (being followed by the generic term “education”) the Domain Name is clearly similar to the LEGO trademark. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, it was said “Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”. The use of the word “education” immediately after LEGO, a well-known trademark, far from distinguishes the Domain Name from the trademark. Indeed, it may even increase the scope for confusion given the Complainant's education division.

The word “lego” is clearly the dominant portion of the Domain Name and raises the possibility, if not likelihood, that Internet users might be confused into concluding that the owner of the Domain Name is also the owner of the trademark to which it is similar, or at least suggests that there is some form of association between the Respondent and the Complainant. In these circumstances confusing similarity arises. Moreover, the inclusion in the Domain Name of the word “education” does nothing to reduce such confusing similarity but may even add to the likelihood of confusion arising. For these reasons, the Panel finds that the Domain Name is confusingly similar to the LEGO trademark.

B. Rights or Legitimate Interests

The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. There must be something more. The Respondent is not licensed in any way by the Complainant. Indeed, there appears to be no affiliation at all. A respondent can show it has rights to or legitimate interests in a domain name in other ways however. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the Domain Name and, given the website to which the Domain Name resolves (being a website containing sponsored links), it cannot be said that there is legitimate noncommercial or fair use. Indeed, in the absence of contrary evidence, this Panel can only assume that the Respondent (or others) derives some commercial benefit from the website to which the Domain Name resolves. A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that promotion of other commercial entities on a website to which a confusingly similar domain name resolves is a bona fide offering of goods or services.

In Drexel University v. David Brouda, WIPO Case No. D2001-0067 the Panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” The Domain Name was registered on August 6, 2008. World-wide recognition of the Complainant's mark was well established at that time. It would be difficult to accept that the Respondent did not know of the Complainant's trademark. It would also be difficult to accept that the Respondent had a reason for registration beyond a desire to attract Internet users to the website linked to the Domain Name.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The mere act of offering for sale a domain name cannot confer such rights. There is no evidence before this Panel to contradict or challenge the contentions of the Complainant. This Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, which given the lack of a Response, has not been contradicted or challenged in anyway. The Panel therefore finds that this second element of paragraph 4 of the Policy is established.

C. Registered and Used in Bad Faith

Given the world-wide fame of Lego, it seems clear that the Respondent was aware of the Complainant and at least the goodwill in the name Lego (and perhaps also the Lego trademark), when it registered the Domain Name. One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here. It is in fact difficult to imagine a good faith use by the Respondent in this case. These factors combined with the offering of the Domain Name for sale, the apparent failure of Respondent to respond to cease and desist letters and to participate in this proceeding, lead this Panel to find that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. 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 <legoeducation.info> be transferred to the Complainant.

Jon Lang
Sole Panelist

Date: June 29, 2009