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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Transure Enterprise Ltd

Case No. D2009-1347

1. The Parties

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

The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands Overseas Territory of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain names <legobioncle.com>, <legoeduction.com>, <legofriends.com> and <legoindiannajones.com> are registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 12, 2009. On October 13, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 14, 2009, Above.com, 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 October 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 9, 2009.

The Center appointed Peter Burgstaller as the sole panelist in this matter on November 12, 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.

On October 19, 2009, Complainant requested that the domain name <legoindiannajones.com> be added to this proceeding; this additional domain name was discovered by Complainant`s counsel shortly before the Notification of Complaint and Commencement of Administrative Proceedings and is also registered by Respondent.

Having reviewed the case file and in accordance with Rules, paragraph 10(a), the Panel made the following Procedural Order ("the Order") on November 17, 2009:

1. The Panel has considered the Complainant`s request having regard to, inter alia, the considerations set out in General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334. For reasons similar to those given by the panel in that case, the Panel hereby grants Complainant`s request.

2. The Panel also therefore orders that the Center obtain registrar verification for the domain name <legoindiannajones.com> from the registrar of this domain name.

3. Following registrar verification for the domain name <legoindiannajones.com>, the Panel further orders that the Center notify the Respondent that the said domain name has been added to the proceeding and allow the Respondent 20 days, in which to provide a Response in relation to this domain name.

4. The Panel`s projected decision date concerning the domain names is extended accordingly, due within 14 days from receipt of Respondent`s Response, or within 14 days from Respondent`s default, should a Response not be submitted.

The Respondent did not submit any response with regard to the added domain name <legoindiannajones.com>. Accordingly, the Center notified the Respondent`s default on December 9, 2009.

4. Factual Background

The Complainant holds trademarks containing the word LEGO as their principal feature around the world (Annex 5).

The Complainant is the owner of the trademark BIONICLE, also registered in more than 30 countries (Annex 5).

The Complainant has submitted evidence (e.g. Annex 8) that the LEGO mark and brand are recognized and associated with Complainant around the world to the point of reaching the status of "famous" marks.

The disputed domain names are registered by Respondent.

5. Parties` Contentions

A. Complainant

The Complainant, based in Denmark, is the owner of the trademark LEGO and several other trademarks used in connection with the famous LEGO brand 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, in the United States and elsewhere. Complainant and its licensees commenced use of the LEGO mark in the Untied States during 1953, to identify construction toys made and sold by them. Their use of the LEGO mark has been extensive, exclusive and continuous since 1953. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2008, was more than USD1,8 billion. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in the United States.

The Complainant is also the owner of more than 1000 domain names containing the terms LEGO. It is the strict policy of the Complainant that all domain names containing the word "lego" should be owned by the Complainant.

The trademark LEGO is among the best-known trademarks in the United States and around the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. In fact, United States media advertising expenditures with regard to LEGO during the past ten years exceed USD50 million. Virtually all parents and children in the United States, and likely throughout the world, are familiar with the LEGO name and mark, and with Lego products and services thereby identified. The LEGO trademark and brand have been recognized as being famous. A list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world.

The use of the LEGO trademark is expanded to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. There is also an extensive Website under the domain name "www.lego.com".

The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole community to be significant. According to 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"), the statute of 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 goes far beyond toys and goods similar to toys.

The BIONICLE line is the biggest-selling theme and has been so ever since its introduction in 2001. The Complainant, through their predecessors, commenced construction and use of the BIONICLE mark during the beginning of 2001, to identify toys made and sold by them. Today products bearing the BIONICLE mark is sold in over 30 countries, including Europe, United States, Canada, Australia, Japan, Singapore, Korea, South Africa. During the years 2001 – 2004 over 52.000.000 pieces/boxes bearing the mark have been sold, generating a selling-in figure of DKK 1.780.000.000. The BIONICLE mark has been used on packaging, displays, all kinds of advertising and promotional material and the advertising expenditures during the years of 2001-2006 amounted to approximately DKK 500 millions.

The BIONICLE mark is registered in over 30 countries. The BIONICLE word mark has been applied for/registered covering several goods and services, including but not limited to toys, clothing, game software, books and films.

The toys marked by the trademark BIONICLE have become one of Complainant`s most successful products due in part to extensive advertising, which prominently depicts the BIONICLE mark on all products, packaging, displays, advertising, and promotional materials. The trademark and its products have won numerous awards. Among other honours and prizes, the trademark was awarded the prize for "Most Innovative Toy of the Year" by the Toy Industry Association, United States.

Identical or Confusingly Similar

The dominant part of the domain names <legoeduction.com>, <legofriends.com>, <legobioncle.com> and <legoindiannajones.com> (hereinafter referred to as the Domain Names) comprises the word "lego", which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world.

In addition to the trademark LEGO, the Domain Name <legobioncle.com> also comprises a misspelling of the trademark BIONICLE.

The Domain Names are all confusingly similar to the Complainant`s world famous trademark LEGO. The addition of the suffixes "eduction" (a misspelling of education),"friends" and "indiannajones" (a misspelling of Indiana Jones) is 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.

The addition of the top-level domain (Tld) "com" does not have any impact on the overall impression of the dominant portion of the Domain Names and is therefore irrelevant to determine the confusing similarity between the trademark and Domain Names.

Anyone who sees the Domain Names is bound to mistake it for names 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 Names either as domain names owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risk being tarnished by being connected to websites. By using the trademark as a dominant part of the Domain Names, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant`s trademark. Persons seeing the Domain Names at issue, even without being aware of the content, are likely to think that the Domain Names are in some way connected to the Complainant, ("initial interest confusion").

Rights or Legitimate Interests

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the 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. Consequently the Respondent may not claim any rights established by common usage.

It is also clear, that 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.

The Respondent registered the domain names <legobioncle.com>, <legoeduction.com>, <legofriends.com> and <legoindiannajones.com>. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.

As the Respondent already had received cease and desist letters concerning other domain names incorporating the LEGO trademark prior to registering the Domain Names, it is clear that the Respondent knew of Complainant`s legal rights in the name LEGO at the time of the registration. It is rather obvious that it is the fame of the trademark and the fact that he had previously been able to sell some domain names to the Complainant that motivated the Respondent to register the Domain Names. That is, the Respondent cannot claim to have been using LEGO, without being aware of the Complainant`s rights to it. This, among other facts, proves that the Respondent`s interests cannot have been legitimate.

The Respondent is today not using the Domain Names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen domain names based on registered trademarks in order to generate traffic to his web sites and through this procedure generate income through sponsored links. By doing this, Respondent is misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the trademark LEGO. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant`s world famous trademark.

Referring to the above mentioned the Respondent has no rights or legitimate interests in respect of the disputed Domain Names.

Registration and Use 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 whole Community and throughout the world. The awareness of the trademark LEGO is considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademark LEGO in combination with other words has skyrocketed the last years (e.g. WIPO Case No.s. D2009-0848, D2009-0784, D2009-0753, D2009-0685, D2009-0680, D2009-0644, D2009-0564, D2009-0500, D2009-0438, D2009-0437, D2009-0381, D2009-0184, D2009-0170, D2008-1826, D2008-1715, D2008-1692.) 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 Domain Names at issue here.

The Complainant first tried to contact the Respondent on February 13, 2009, through a cease and desist letter concerning three other domain names the Respondent owned (also incorporating the trademark LEGO). The email was sent to Above.com that came back and stated that the real registrant of these domain names were Transure Enterprise Ltd. The cease and desist letter was therefore forwarded to Transure Enterprise Ltd and its listed email address; hostmaster@transureent.com. The Respondent replied to the letter via his address parkdns@gmail.com, offering to sell the domain names for USD 200 each. The Complainant replied that it would only reimburse out of pocket expenses and based on information the Respondent provided on his expenses for the domain names, the Complainant agreed to reimburse him USD 100 per domain name. On May 14 and 15, 2009, two separate cease and desist letters were sent to Above.com, concerning the domain names <legobioncle.com>, <legoshp.com> and <legocreation.com>, by two different representatives of the Complainant. The Respondent came back offering to sell the domain names <legobioncle.com> and <legoshp.com> for USD 500 and the domain name <legocreation.com>, along with two other domain names he owned; <legopickabrick.com> and <legofreegames.com> for USD 250 each. The Complainant refused to pay for the domain names <legocreation.com>, <legopickabrick.com> and <legofreegames.com> and eventually moved on to file a UDRP for these domain names (see LEGO Juris A/S v. Above.com Domain Privacy, Host Master / Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-0907). For the domain names <legoshp.com> and <legobioncle.com>, the Complainant refused to pay USD 250 but agreed to pay USD 75 for the domain names. A transaction via SEDO was initiated but in the end, only <legoshp.com> was submitted for transfer by the Respondent. On July 1, 2009, the Complainant sent yet another cease and desist letter to Above.com, as the listed registrant of domain names <legoeduction.com> and <legofriends.com>. Again, Above.com came back and stated that the real registrant of these domain names were Transure Enterprise Ltd. When the reply came from the Respondent (parkdns@gmail.com) with an offer to sell the domain names for USD 250 each, the Complainant was fed up and decided to file another UDRP.

The Domain Names are currently connected to a website containing sponsored links. Consequently, the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation or endorsement of the websites. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages himself.

Consequently, the Respondent should be considered to have registered and to be using the Domain Names at issue in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must prove that:

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

(ii) Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

The Complainant has rights in the trademark LEGO for construction toys and other LEGO branded products through registration all over the world (e.g: US trademark registration No. 1018875 – LEGO, with the filing date of September 17, 1974; US trademark registration No. 2245652 – LEGO, with the filing date of November 21, 1997; CTM registration No. E39800 – LEGO, with the filing date of April 1, 1996; UK trademark registration No. E2829463 – LEGO and design, with the filing date of August 28, 2002; Chinese trademark registration No. 206919 – LEGO and design, with the filing date of April 15, 2004) but also through extensive, exclusive and continuous use for more than a half of century (since 1953).

The Complainant also owns the trademark BIONICLE in several countries for several classes (e.g. 9, 15, 25, 28).

The Domain Names <legobioncle.com>, <legoeduction.com>, <legofriends.com> and <legoindiannajones.com> are confusingly similar with the Complainant`s trademark as they include in their entirety the Complainant`s famous and distinctive trademark LEGO. With regard to the domain name <legobioncle.com> it includes also the Complainant`s trademark BIONICLE in a misspelling way. The use of the LEGO trademark in connection with other words does not make the disputed domain names distinctive from the Complainant`s trademark LEGO, this is especially true when using mere descriptive words or when combining Complainant`s trademarks <legobioncle.com>. Moreover, misspelling of words do not have any impact on the overall impression of the dominant portion of the domain names at issue.

It has also long been held that suffixes such as the gTLD suffix ".com" cannot negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in either of the Domain Names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to that domain name. However, in the present case the Respondent failed to submit a Response.

It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:

"…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP".

Considering all of the evidence in the Complaint and the exhibits attached to it, the Panel finds that Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in either of the domain names. The prima facie case is based especially on the facts that:

(i) the LEGO mark is one of the most well-known in the world;

(ii) it indicates one of the most famous manufacturers of construction toys, computer hardware and software, books, videos and computer controlled robotic construction sets in the world including in the United States where the Respondent is domiciled;

(iii) the Respondent chose the substance of this prominent trademark as part of the domain names at issue and added only descriptive (misspelling) words ("friends" and "eduction") to it and in the case of the domain names <legobioncle> and <legoindiannajones> added the trademark BIONICLE (in a misspelling way) also owned by Complainant as well as the well known character name "indiannajones" (also in a misspelling way) to it;

(iv) the Respondent has not been authorized by the Complainant to use the LEGO mark or name in a domain name or anywhere else or to sell its products or products purporting to be the Complainant`s products on the internet or in any other way.

Thus, the Panel considers that the Complainant has made out a prima facie case and the burden therefore shifts to the Respondent to rebut it.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

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

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

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

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

As stated in many decisions adopted under the Policy (Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registered and use in bad faith, are cumulative, Consequently, Complainant must clearly show that:

- the domain name was registered by Respondent in bad faith and,

- the domain name is being used by Respondent in bad faith.

Registered in bad faith

The Domain Names are composed by the Complainant`s distinctive and famous trademark LEGO and the addition of another (misspelled) trademark/character name ("bioncle" and "indiannajones") or mere (misspelled) descriptive words ("eduction" and "friends").

The Complainant has provided evidence of the reputation of the LEGO trademark due to its longstanding and widespread use and to the relevant amount of promotional investments made on the trademark LEGO as well as BIONICLE.

It is the Panel`s conviction that LEGO is a famous trademark that enjoys a worldwide reputation and this assertion has been confirmed by previous UDRP decisions (LEGO Juris A/S v. World Internet Authority, WIPO Case No. D2009-1467; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V, WIPO Case No. D2009-0784; LEGO Juris A/S v. David Palmer, WIPO Case No. D2008-1826 and LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715).

Previous panels held that in certain circumstances when a trademark is famous, the respondent`s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: "Bad faith can be presumed based on the fame of Complainant`s marks, such that the Respondent was aware or should have been aware of Complainant`s well-known marks and claims of rights thereto".

With regard to the LEGO trademark previous panelists moreover have asserted that: "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" (LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564).

These findings together with the Complainant`s contentions and presented proofs lead this Panel to the conclusion that the disputed domain names have been registered in bad faith by the Respondent.

Used in bad faith

In order to meet paragraph 4(a)(iii) of the Policy the Complainant has also prove that Domain Names are being used in bad faith.

The Respondent`s Domain Names led to a website with sponsored links from which revenue is presumably derived (Annex 10). However, the fact that the Respondent has registered Domain Names incorporating the substance of one of the world`s most famous trademarks (especially Annex 8) without any authority or permission to do so shows that the Respondent not only registered the Domain Names in bad faith but also has used the Domain Name in bad faith. It is clear to this Panel that the Domain Names are being used in a manner consistent with the circumstances described under paragraph 4(b)(iv) of the Policy. (See e.g. LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685 and LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564).

The whole modus operandi of the Respondent in using the Complainant`s famous trademark with regard to the Domain Names (see also the Respondent`s reactions to the cease and desist letter, Annex 11) makes it clear to the Panel that the Domain Names have been registered and used in bad faith; thus, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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 names <legobioncle.com>, <legoeduction.com>, <legofriends.com> and <legoindiannajones.com> be transferred to the Complainant.

 

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Peter Burgstaller
Sole Panelist

Dated: December 19, 2009