WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Gerardo Rodriguez Lara

Case No. D2013-1522

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 Gerardo Rodriguez Lara of Montevideo, Uruguay.

2. The Domain Name and Registrar

The disputed domain name <juegoslego.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2013. On August 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2013.

The Center appointed Keith Gymer as the sole panelist in this matter on October 3, 2013. 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.

On September 5, 2013, the Complainant submitted a supplemental filing comprising scans of the certificate for Uruguayan registration 362.894 for LEGO and the historical renewal details for this registration.

4. Factual Background

The Complainant LEGO, Juris A/S, based in Denmark, is the owner of LEGO, and all other trademarks used in connection with the famous LEGO brands of construction toys and other LEGO branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Uruguay, where the Respondent is located.

The Complainant is the registered proprietor of numerous registrations for the LEGO trademark around the world, including, for example Uruguayan Trade Mark registration 362.894 (current renewal of original registration 95.790) dating from 28 September, 1965.

The Respondent, Gerardo Rodriguez Lara, is a private individual with an address in Montevideo, Uruguay. According to the WhoIs record, the disputed domain name was registered in the Respondent’s name on April 28, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the trademark LEGO is among the best-known trademarks in the world. A list of the top 500 Superbrands for 2009/10, provided by Superbrands UK, had LEGO as number 8 of the most famous brands.

The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name <lego.com>. The Complainant is also the owner of more than 2,400 domain names containing the term LEGO. It is the strict policy of the Complainant that all domain names containing the word “lego” should be owned by the Complainant.

The mark LEGO has substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered to be so significant, that the trademark should be entitled to extended protection under the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), by which a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e., regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO should extend far beyond toys and goods similar to toys.

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The dominant part of the disputed domain name <juegoslego.org> comprises the word “lego”, which is identical to the registered trademark LEGO. The disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The addition of the generic top-level domain (gTLD) “.org” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determining the confusing similarity between the trademark and the domain name. In addition, the word “juegos” is Spanish for “games” so the prefix “juegos” itself has a very close association with the Complainant’s trademark.

The fame of the trademark has been confirmed in numerous previous UDRP decisions: LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840 (“LEGO is clearly a well-known mark”); LEGO Juris A/S v. Domain Administrator, WIPO Case No. D2010-1260 (“In the present Case, the disputed domain names incorporate the Complainant’s well-known registered trademark LEGO”); and LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680 (“LEGO is a mark enjoying high reputation as construction toys popular with children”).

Anyone who sees the domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using the trademark as a dominant part of the domain name, the Respondent exploits the goodwill and the image of the trademark.

Summarizing this, the Complainant is the owner of the well-known trademark LEGO. The disputed domain name is confusingly similar to the Complainant’s registered trademark LEGO.

The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent does not have any registered trademarks or trade names corresponding to the domain name. 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. Consequently the Respondent may not claim any rights established by common usage.

It is also clear that the Complainant has not given the Respondent any license or authorization of any other kind to use the trademark LEGO. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

The Respondent registered the domain name on April 28, 2013. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.

The Respondent is today not using the 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 with a web address redirected to a registrar’s parking page. The Complainant has seen an increase in domain names registered with the term “juegos” and the trademark LEGO. The Complainant has recently recovered the following domain names from a third party, which also incorporate the trademark LEGO: <juegosdelagranaventuralego.com>, <juegosdelagranaventuralego.info>, <juegosdelagranaventuralego.org> as well as <juegosdelagranaventuralego.co>, and <juegosdelagranaventuralego.net>.

Based on the above, the Complainant asserts that the Respondent has no rights or legitimate interest in respect of the domain name.

The domain name was registered and is being used in bad faith

The trademark LEGO in respect of toys belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.

The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed in recent years (as an indication, see, e.g., the following UDRP Cases: LEGO Juris A/S v. Domains By Proxy, LLC/ Quest Commerce Inc. Quest Commerce Inc.,WIPO Case No. D2012-0048; LEGO Juris A/S v. David Hudson, WIPO Case No. D2012-0060; LEGO Juris A/S v. Execucorp Management One, Inc., WIPO Case No. D2012-0062; LEGO Juris A/S v. Nasirudin, EazySmart.com, WIPO Case No. D2011-0617; LEGO Juris A/S v. Owen Jones, WIPO Case No. D2011-0537; LEGO Juris A/S v. Xianbin Chen, WIPO Case No. D2011-0505; LEGO Juris A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2011-0442; LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226; LEGO Juris A/S v. Private Private, WIPO Case No. D2010-2191; LEGO Juris A/S v. AbdiPraja, WIPO Case No. D2010-2178; LEGO Juris A/S v. Communikas LLC, WIPO Case No. D2010-2115; LEGO Juris A/S v. Wyntergreen.ca, WIPO Case No. D2010-2101; LEGO Juris A/S v. lego building co, WIPO Case No. D2010-2047; LEGO Juris A/S v. Multi-Medija Studio, Informacijske Storitve Milan Malek S.P., WIPO Case No. D2010-2043; LEGO Juris A/S v. William Stehlin, WIPO Case No. D2010-2042; LEGO Juris A/S 诉 yanghuitong, WIPO Case No. D2010-2030; LEGO Juris A/S v. Maho Jakotyc, WIPO Case No. D2010-0835; LEGO Juris A/S v. Online Toy Superstore, WIPO Case No. D2010-0839; LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840). The considerable value and goodwill of the mark LEGO is, most likely, a large contribution to this and also what made the Respondent choose to register the disputed domain name.

The Complainant first tried to contact the Respondent on May 13, 2013 via a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the domain name violated the Complainant’s rights in the LEGO trademark. The Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). However, no reply was received to the original letter and a subsequent reminder was sent on June 4, 2013. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier disputes that 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, e.g., 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.

As stated earlier, the Respondent has chosen a domain name based on a registered trademark in order to generate traffic to a parked registrar page with the Registrar. The disputed domain name currently resolves to a standard registrar’s parking page, on which the Registrar’s name is printed at the top and the Registrar’s advertising for domain name services appears very prominently. Even if the Respondent were to respond that the “default parking page” was generated by the Registrar without the Respondent’s participation, and has never generated any revenue for the Respondent, the fact remains that Registrar-generated pages are in most circumstances attributable to the domain name owner. UDRP panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content. For example, anyone professionally conversant with online services and domain name-related business may be presumed to be aware of the fact that registrars will commonly prepare parking pages for undeveloped domain names registered with them, unless the registrant takes the proper steps to opt-out of such an arrangement, (whether or not at additional expense), to prevent this. In this case the “default parking page” is attributable to the Respondent.

The Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, for support in this situation. The consensus of WIPO UDRP panelists’ views, as published in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at Paragraph 3.2, accords with this view. It states that:

"With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the Case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”.

In the present circumstances, the confusingly similar nature of the domain name to the Complainant's mark LEGO, the highly distinctive nature of the mark in question and in combination with a relevant term associated with the Complainant, and the fact that it is widely known in the toy industry, and the lack of any explanation from the Respondent as to why he registered the domain name should suffice to determine that the domain name was registered in bad faith.

Consequently, the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

Whether or not the Respondent is the one getting revenue from any products being sold at the website is irrelevant for the finding of bad faith in this case. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the Respondent claimed that he had actually not received any money from the web site. The panel then stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” The same principle must apply in this case as well.

To summarize, LEGO is a famous trademark worldwide. It is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.

Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the domain name in bad faith.

Remedies Requested

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In order for a panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that

(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.

The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its Case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate”.

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The Complainant has demonstrated relevant registered trademark rights and evidence of fame in the LEGO name and mark, and the Panel is in no doubt that the LEGO mark is indeed internationally well-known.

The disputed domain name is <juegoslego.org>, which reportedly may be simply translated as “Lego toys” in Spanish.

This amounts to nothing more than a directly descriptive reference to the nature of the LEGO products – toy construction blocks. The gTLD suffix, “.org”, is of no distinctive relevance. The disputed domain name plainly incorporates the LEGO name and mark, which is instantly recognizable in that context, regardless of whether the reader understands Spanish.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has made no claims to any relevant prior rights of its own. Clearly, the Respondent is not himself known by the disputed domain name, nor has the Respondent himself offered any explanations, which might support a claim of legitimate, non-commercial use of the domain name. Rather, the Respondent appears to have left it to the Registrar to set up what is probably an automatically generated “parking page” at “www.juegoslego.org”. When inspected by the Panel, this page predictably had a column of links and advertising (likely “click through” income generating) to various sites, including some links to sites offering Lego toys and to a number of other apparently unrelated games sites.

In the Panel’s view, such use cannot be considered as “bona fide” or to qualify as a “legitimate non-commercial or fair use”, but is indeed misleading to users and potentially tarnishes the trademark at issue. Even if it is the Registrar’s automated system, which technically generates the misleading links and advertising, the use made of the domain name is ultimately under the responsibility and control of the Respondent.

In these circumstances, the Panel accepts the Complainant’s submissions that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, the following are examples of the sort of conduct (without limitation) which, if found, shall be considered as evidence of registration and use in bad faith:

“(i) circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

In the present case, the Panel considers that the situation is analogous to the example of paragraph 4(b)(iv). The Respondent has used the disputed domain name, or has permitted the Registrar to use it, in a misleading way which can cause not just confusion with, but tarnishment of, the LEGO name and mark, as noted in section 6B above. Even if this use were to be considered as “passive”, that does not excuse the Respondent of responsibility, in the Panel’s view, particularly as the Respondent was put on notice of the Complainant’s rights and concerns within a month of registration of the disputed domain name. The evidence is sufficient to persuade the Panel that the disputed domain name was indeed registered in bad faith, and that there could be no good faith use without the Complainant’s authorization.

For the purposes of the Policy, therefore, the Panel holds that the domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is met.

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 disputed domain name <juegoslego.org> be transferred to the Complainant.

Keith Gymer
Sole Panelist
Date: October 17, 2013