WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. McHost Ltd, McHost.Ru Case No. D2009-1610 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is McHost Ltd, McHost.Ru of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain names and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2009. On November 30, 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 disputed domain names. On December 2, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 December 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on January 7, 2010.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on January 13, 2010. 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, LEGO Juris A/S is based in Denmark and is the owner of LEGO trademark and other trademarks associated with the LEGO brand of construction toys and other LEGO branded products. The Complainant and its licensees commenced the use of the LEGO mark in the United States of America in 1953. The use of the LEGO trademark has since been extensive, continuous and exclusive.
The Complainant is also the owner of more than 1,000 domain names incorporating LEGO mark and maintains a strict policy that all domain names with the work LEGO in them should be owned by the Complainant.
Due to extensive advertising LEGO trademark is one of the most famous trademarks in the world, with the official top 500 Superbrands for 2009/10, provided by Superbrands United Kingdom of Great Britain and Northern Ireland, placing LEGO at number 8.
LEGO Group has expanded the use of LEGO trademark to include computer hardware and software, books, videos and computer controlled robotic construction sets. 5. Parties' Contentions A. Complainant
(a) The disputed domain names and are identical or confusingly similar to a trademark or service mark in which the Complainant has right.
- The dominant part of the disputed domain names incorporates the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and as domain names in numerous countries across the world.
- The distinctiveness of the mark LEGO has been also recognised in previous UDRP decisions. The addition of the word “engine” is not relevant and will not have any impact on the overall impression of the disputed domain names.
- The addition of top-level domain (“TLD”) “ com” does not have any impact on the overall impression and is therefore irrelevant.
- Anyone who sees the disputed domain names is bound to mistake them for names related to the Complainant. Due to reputation of the LEGO trademark the public is likely to perceive the disputed domain names as domain names owned by the Complainant or that there is a commercial relation with the Complainant. The trademark is also at risk of being tarnished by being connected to a website.
- The Respondent exploits the goodwill and the image of the trademark that may result in dilution or other damage to the trademark of the Complainant.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
- The Complainant has not found that the Respondent has any trademarks registered or other trade names that correspond to the disputed domain names. The Complainant also has not found any use of LEGO such that would give the Respondent any rights or legitimate interests in the disputed domain names.
- No license or authorisation has been given to the Respondent by the Complainant. The Respondent is not an authorised dealer of the Complainant's products and has never been in a business relationship with the Complainant.
- Mere registration of the disputed domain names did not give rise to any legitimate interest in respect of them.
- It is highly unlikely for the Respondent not to have known of the Complainant's rights in the name Lego at the time of registration of the disputed domain names.
- The Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. The Respondent has chosen the disputed domain names in order to generate traffic to the website and thus generate income through sponsored links.
(c) The disputed domain names were registered and are being used in bad faith.
- The trademark LEGO is a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The considerable value behind the trademark has lead to a surge in domain name registrations incorporating the mark.
- The Complainant tried to resolve matters amicably by contacting the Respondent, but no replies were received to the cease and desist letters that were sent out to various email addresses associated with registrations of the disputed domain names.
- One of the disputed domain names currently connects to a website with sponsored links, hence the Respondent is using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to the websites by creating likelihood of confusion with the Complainant's mark. Whether or not the Respondent has influenced what links appear on the site is irrelevant, alongside with the fact whether the Respondent is in fact getting revenue from the page itself. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules.
However the Respondent failed to file a Response to the Complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner other than an email communication of December 10, 2009 stating “Приветствую![“Greetings!”-Translated from Russian]
I am not the owner of domain . See whois.
Please, contact to McHost company, which registered this domain name.”
The Panel finds that the Respondent has been given fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply. A. Identical or Confusingly Similar
The Complainant has registered numerous LEGO trademarks around the world including in the US since August 26, 1975 and a Community trademark since October 5, 1998. The Complainant submits that the disputed domain names and are confusingly similar to the registered trademark LEGO as the domain name incorporates the whole of the trademark.
The Panel finds that the disputed domain names may be directly associated in the minds of the Internet users with the Complainant's trademarks.
The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd,WIPO Case No. D2000-0802).
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant's assertions, it is up to the Panel to consider whether the Respondent's use of the disputed domain names demonstrates rights or legitimate interests in the domain names.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:
(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) 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 complainant's marks.
A respondent may elect to demonstrate rights and legitimate interests,for example, by proving the circumstances of paragraphs 4(c)(i)(iii) of the Policy. By not responding to the Complainant's contentions, the Respondent in this proceeding has not attempted to show its rights and legitimate interests.
Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain names for a bonafide offering of goods and services. The Respondent does not use the disputed domain names in connection with the bona fide offering of goods and services, for example, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
According to the documents submitted by the Complainant and a subsequent verification by the Panel, the home page of the website under the disputed domain name displays a list of Lego and construction toy related videos as well as pay-per-clicks advertisements related to either Lego, construction toys, robots or others. The website under the disputed name has a testing page with no links to other websites. Neither of the websites offers any goods or services; the first merely provides links to videos and other websites and the second looks like a holding page.
The Panel finds no evidence that the Respondent was using or is using the disputed domain names for a bona fide offering of goods and services.
Secondly, as for the Respondent's proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain names.
The Respondent registered the disputed domain name on August 30, 2009 and the disputed domain name on October 12, 2009, the date when the Complainant sent a cease and desist letter to the Respondent. The Complainant asserts that the mark LEGO has been in use since 1953 and has trademarks registered in many countries across the world.
The Panel believes that the Respondent knew about the Complainant's trademark at the time of registration of the disputed domain names.
It is the Panel's view, on the present facts, that the Respondent probably registered the disputed domain names with awareness of the Complainant's products and trademarks as well as goodwill associated with them.
Thus, the Panel finds that the Respondent's use of the disputed domain names does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy.
The Panel finds the Complainant has carried its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name 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 the Complainant, for valuable consideration in excess of its 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 its 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 its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainant's official website to the Respondent's website for potential commercial gain.
According to the evidence submitted by the Complainant, the home page under the disputed domain name displays pay-per-click advertisements, while the website under the disputed domain name does not contain any links but appears to be a holding or under construction page.
The Panel finds that the Respondent's websites could have attracted potential attention from the Internet users because of their probable association with the Complainant's products and services.
The Panel's independent verification has shown that the current use of the Respondent's websites at the domain names and is still the same.
The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy.
The Panel holds that the Respondent has registered the disputed domain names in bad faith. For the purposes of precluding a finding of bad faith, the Respondent does not conduct any legitimate business activity using the disputed domain names. The Respondent likely knew of the Complainant's products and should have been aware of the trademarks of the Complainant. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain names, lead the Panel to conclude that the disputed domain names have been registered by the Respondent in bad faith.
The fact that the Respondent's use of the disputed domain names may create a likelihood of confusion with the Complainant's products and trademarks under paragraph 4(b)(iv) of the Policy indicates that the disputed domain names have been used and are still being used in bad faith.
The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain names 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 names, and be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Dated: February 1, 2010
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