WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. PrivacyP / SMVS Consultancy Private Limited Case No. D2009-1094 1. The Parties
Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is PrivacyP/SMVS Consultancy Private Limited of Moergestel, Netherlands and Fort Mumbai, Maharashtra, India, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint together with the amendment to the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2009. On August 14, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Name. On August 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 22, 2009.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 28, 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
Complainant is the owner of numerous trademark registrations in jurisdictions throughout the world for the LEGO trademark, as well as more than 450 domain names that include the LEGO mark. 5. Parties' Contentions A. Complainant
The LEGO trademark is one of the best known trademarks in the world due to Complainant's extensive use and advertising of the mark. Sales of products under the brand in the United States of America exceeded USD1 billion, and Complainant spent more than USD50 million advertising the brand in the United States, in the last ten years. Several surveys have listed LEGO among the world's most famous brands.
Complainant operates a fan club for its products under the name “LEGO Club.” Complainant owns the domain name , which directs Internet users to the LEGO Club web site. The Domain Name is confusingly similar to Complainant's LEGO trademark, and is designed to take advantage of a common typographical error that may occur when Internet users are attempting to access the web site.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not known by the Domain Name, and is not using the Domain Name in connection with a bona fide offering of goods or services. Respondent is using the Domain Name in connection with a site that offers sponsored links. This use should not be considered a bona fide offering of goods or services.
Respondent has registered and is using the Domain Name in bad faith because Respondent is intentionally using the Domain Name to cause confusion and divert Internet traffic for commercial gain. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The second level of the Domain Name consists of Complainant's trademark followed by the letters “clb.” The LEGO trademark is the dominant part of the domain name, and letters “clb” do not serve to distinguish it from Complainant's trademark in a meaningful way. Moreover, Complainant uses the domain name in connection with a fan club for its products. The Domain Name appears to be designed to attract traffic from typographical errors made by users who type in . Other panels have found confusing similarity under similar circumstances. See, e.g., Sidestep, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2007-0550. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a right or legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Respondent has not presented evidence that it used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that it is commonly known by the Domain Name or that it is making a noncommercial or fair use of the domain name. Moreover, use of the Domain Name in the circumstances here simply to provide links to web sites (a practice that is typically engaged in to collect click-through referral fees) cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162. Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. Respondent's use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to Respondent's site by creating confusion as to source and results in commercial gain to Respondent.
It also bears mention that Respondent's “typosquatting” use of a common typographical error that Internet users make when they are likely trying to find a web site associated with Complainant to direct traffic to another site is also evidence of bad faith, even though this activity is not explicitly covered by the enumerated factors in paragraph 4(b). See, e.g., The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.,WIPO Case No. D2002-1125. 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, be transferred to Complainant.
Michelle Brownlee
Sole Panelist
Dated: October 9, 2009
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