WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. WhoisGuard/abi wada

Case No. D2012-0404

1. The Parties

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

The Respondents are WhoisGuard of Los Angeles, California, United States of America and abi wada of Jakarta, DKI, Indonesia.

2. The Domain Names and Registrar

The disputed domain names <legograndemporium.com>, <legohome.org>, <legowhitehouse.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012. On February 29, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On March 1, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2012 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 March 6, 2012.

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 March 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2012.

The Center appointed Adam Samuel as the sole panelist in this matter on April 11, 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 is part of a group of companies which makes and sells construction toys. It is the legal owner of a number of trademarks around the world for LEGO, including a number of United States trademark registrations, the earliest of which appears to be registration no. 1018875 registered on August 26, 1975. The disputed domain names were all registered on May 18, 2011. The Complainant has registered numerous domain names using its LEGO trademark, notably <lego.com> in 1995.

5. Parties’ Contentions

A. Complainant

This section sets out the Complainant’s contentions with which the Panel may or may not agree.

The Complainant owns the LEGO trademark. Its licensees are authorized to exploit the Complainant’s trademark rights. These make up the LEGO Group of companies. They started using the LEGO mark in the United States during 1953. The dominant part of the disputed domain names comprises the word LEGO. The addition of the generic terms “grandemporium”, “home” and “whitehouse” are not relevant and will not have any impact on the overall impression of the dominant part of the name, LEGO, instantly recognizable as a world famous trademark. Anyone who sees the disputed domain names is bound to mistake them for a names related to the Complainant. The likelihood of confusion includes an obvious association with the Complainant’s trademark.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. The Complainant has also 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 given to the Respondent any license or authorization of any other kind to use the LEGO trademark.

All three disputed domain names were registered on May 18, 2011 with the same name servers suggesting that they have the same owner. The fame of the LEGO trademark has motivated the Respondent to register the disputed domain names. The sites to which the disputed domain names resolve display sponsored links to among others “www. amazon.com” online sale of toys, including LEGO toys.

Since their registration, the disputed domain names have been connected to websites containing sponsored links from which the Respondent derives income once a visitor clicks on the links and is redirected to the different online shops. The Respondent is using the disputed domain names to attempt to attract for commercial gain Internet users to the websites concerned by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

The Complainant sent a cease and desist letter to the Respondent on December 2, 2012. In that, the Complainant told the Respondent that the unauthorized use of the LEGO trademark in the disputed domain names violated the Complainant’s rights. The Complainant requested the immediate transfer of the disputed domain names and offered compensation for the expenses of registration and renewal fees. No reply was received to this or the two reminder letters.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) each disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of each disputed domain name; and

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

A. Identical or Confusingly Similar

The three disputed domain names consist of the Complainant’s well-known trademark and the words “grandemporium”, “home” and “whitehouse” followed by either “.com” or “.org”. The suffixes “.com” and “.org” have no impact on the question of confusing similarity since they are necessary for the effectiveness of the disputed domain names.

The addition of a generic word to a trademark in forming a domain name, particularly one that describes the products which the trademark is used to sell does not remove the confusing similarity between a domain name and the trademark concerned.

As the panel said in PIERRE BALLMAIN SA. v. Guilian Zhang,WIPO Case No. D2010-2140:

“The consensus view of previous panels is that a domain name which incorporates a trade mark in its entirety and incorporates other elements which do not distinguish the domain name from the trade mark is confusingly similar for purposes of paragraph 4(a) of the Policy.

The Disputed Domain Name incorporates the trade mark BALMAIN in its entirety. The words “jackets” and “sale” after the word “balmain” in the Disputed Domain Name are descriptive and do not successfully distinguish the Disputed Domain Name from the trade mark BALMAIN. The Panel therefore holds that the Disputed Domain Name is confusingly similar to the trade mark BALMAIN.”

LEGO building bricks have been used by children for many years to construct toy buildings of various types which commonly include homes. The Complainant’s group of companies does actually market a “LEGO” kit for building a replica of the White House. While “grandemporium” even when spelt as two separate words does not particularly have any connection with the Complainant’s group, equally, it does not have any connections with anything else. An emporium is a shop and that is obviously where LEGO toys can be bought.

For all of the above reasons, the Panel concludes that the disputed domain names are all confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “LEGO” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, and in the absence of any response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The name “LEGO” has no apparent independent existence or meaning except as the Complainant’s trademark or the Latin word for “I read”. From the generic words added to each of the disputed domain names, it is apparent that the Respondent was thinking more in terms of the Complainant’s trademark. Indeed, the dispute domain names all resolve to websites marketing LEGO products.

It is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain names other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s trademark or business.

The only explanation of what has happened seems to be that the Respondent’s motive in registering the disputed domain names is either to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy each of the disputed domain names for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.

For these reasons, the Panel concludes that the disputed domain names were registered and are being used in bad faith. As a result, it is unnecessary to deal with the Complainant’s other contentions.

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 disputed names, <legograndemporium.com>, <legohome.org>, <legowhitehouse.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Dated: April 16, 2012