WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Holly Cooper / WhoisGuard Protected Case No. D2010-0545 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Holly Cooper of Janesville, Wisconsin, United States of America/ WhoisGuard Protected of Westchester, California, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2010. On April 12, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 13, 2010, eNom transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant replied on April 19, 2010 indicating its decision to proceed without filing an amendment to the Complaint. 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 April 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on May 21, 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 is a Danish company that manufactures construction brick toys. It uses the trademark LEGO to market its toys in several countries. It has filed documents that show its ownership of numerous registered trademarks for its LEGO marks in many jurisdictions. Some of its valid and subsisting registered LEGO trademarks are CTM 39800 under classes 14, 16, 20, 24, 25, 28, 3, 38, 41, 9 and registration numbers 1,018,875 and 2,245,652 under class 28 in the U.S.A. The Complainant also owns over one thousand domain names containing its LEGO mark.
The disputed domain name was created on November 21, 2009. The website linked to the disputed domain name displays pictures of the Complainant's products and has links to other third party websites. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its famous LEGO trademark. It is a well-known mark due to extensive use by the Complainant and its licensees, widespread advertisements and prominent display of the mark on packaging and promotional material. The Complainant states its products are sold in more than one hundred and thirty countries.
The Complainant states it commenced using the mark in the U.S.A through its predecessors in the year 1953. Since then, its business has expanded considerably with a turnover of 1.8 billion USD for the year 2008. It contends its LEGO mark is world famous and ranks eighth in the Superbrands U.K list of top 500 Superbrands for 2009/10. The Complainant cites Article 6bis of the Paris Convention and Articles 16.2 and 16.3 of the TRIPS Agreement, which mandate a higher protection ought to be accorded to well known marks. The fame of its mark has also been recognized in several previous UDRP decisions.
The Complainant alleges the words “for girls “ and the gTld “.info” in the disputed domain name are not significant in determining confusing similarity with its distinctive mark. Adding the letter “s” to its trademark in the disputed domain name constitutes a misspelling of its mark. The Complainant states that it has put in enormous efforts to avoid using the term “legos” to ensure that its mark does not become generic for construction brick toys. The Complainant fears the Respondent's use of the mark will tarnish or dilute its mark.
The Complainant states that the Respondent has no rights or legitimate interests in the domain name as it has not authorized or licensed the use of its mark to the Respondent. The Complainant alleges the Respondent has not registered any trademarks or trade names corresponding to the disputed domain name and does not have any rights from common usage, but has registered the disputed domain name only for the fame and value associated with the LEGO mark.
The Complainant argues the disputed domain name has been registered and used in bad faith to exploit a confusingly similar variant of its mark for generating web traffic to a website that contains sponsored links. The Complainant argues that even if the website content and the links are placed by the registrar, it does not absolve Respondent's bad faith, as the Respondent has the power to instruct the registrar to remove any offending material. Bad faith is also indicated by the Respondent's failure to reply the Complainant's cease and desist letters.
The Complainant refers to cases to show third party registrations of domain names using the LEGO mark with other words are on the rise. The Complainant states the disputed domain name is not used for legitimate or fair use purposes, but is used to divert consumers to the Respondent's website by exploiting the fame of its mark and therefore requests for transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Identity of the Respondent
The Respondent's use of an identity shield had prevented the Complainant from knowing the name and identity of the true registrant at the time of filing the Complaint. In UDRP proceedings the registrant of the disputed domain name is the Respondent. It is well established that if the registrant has used an identity shield, and the Registrar discloses the name of the registrant during registrar verification, it is not a change of registrant, but the mere lifting of a veil to disclose the identity of the true registrant. In these proceedings the real registrant and the privacy shield named in the Complaint shall therefore be treated as one and the same entity.
To obtain the remedy of transfer of the disputed domain name, the Policy stipulates that the Complainant has to establish three elements under paragraph 4 (a).
(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element requires the Complainant to prove that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has clearly demonstrated its rights in the LEGO trademark in many countries around the world. The Complainant has also successfully established that its LEGO mark has acquired significant goodwill that it is distinctive of its products.
The disputed domain name comprises the Complainant's LEGO trademark with the letter “s” followed by the generic words “for girls”. The Panel finds the distinctive part of the dispute domain name is the LEGO trademark, which renders the disputed domain name confusingly similar to the trademark. The addition of the letter “s”, the words “for girls” and the gTld “.info” does not lessen the impression that the dominant part of the disputed domain name is the Complainant's distinctive mark.
The Panel finds the disputed domain name is confusingly similar to the Complainant's LEGO trademark. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, the Respondent may establish rights and legitimate interests in the domain name if, inter alia, any of these circumstances are found present : (i) before any notice of the dispute the Respondent's 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 been known by the domain name, even if no trademark rights have been acquired by the Respondent, 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.
There is no evidence on record to suggest that the Respondent is making a bona fide offering of goods or services. The Respondent has posted the following statement on the website:
“This website gives you the best information on where to find Great Deals on Legos For Girls”.
The website however contains numerous links to often unrelated third party websites such as Tripadvisor, Max New York Life and Clickindia, which implies that it is being used as a link farm. In the Panel's view, the Respondent is clearly not using the disputed domain name and the corresponding website in connection with a legitimate business.
There is no material before this Panel to suggest that the Respondent is known by the disputed domain name or the website linked to the disputed domain name is used for the sale of any products. Although the products referred to in the text of the Respondent's website are those of the Complainant it does not imply that the Respondent has any authorization or legitimate right to use the Complainant's mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3 states that an online reseller of goods could have a legitimate interest in a domain name if, for example, the Respondent: (i) actually sells the trademarked goods (ii) uses the website to sell only the trademarked goods, (iii) discloses its relationship with the Respondent, and (iv) is not trying to corner the market on all relevant domain names, thus depriving the complainant of the opportunity of reflecting its trademark in a domain name.
The Panel finds the Respondent here refers to the Complainant's mark with no authorization to do so. The Respondent under these circumstances cannot be termed an authorized reseller or be found to use the Complainant's mark in manner that can be categorized as legitimate non-commercial or fair use. Given the Complainant's unchallenged submissions that it has not permitted the Respondent any authorization to use its mark and tha it has no relationship with the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has made a prima facie case regarding the Respondent's lack of rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant's LEGO mark is internationally recognized, and as discussed above the Panel finds the disputed domain name is a confusingly similar variant of the Complainant's mark. The Respondent uses the disputed domain name to intentionally attract Internet users to a link farm website by creating likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. This is evidence of bad faith registration and use of the disputed domain name that comes squarely within the purview of paragraph 4(b)(iv) of the Policy. See for instance F. Hoffmann-La Roche AG v. Sergey Popov,WIPO Case No. D2009-0983. (Bad faith was found where the domain name was registered and used with the intention of unfairly exploiting the goodwill of the trademark for Respondent's own advantage by attracting Internet customers to its website.)
The website linked to the disputed domain name has photographs of the Complainant's LEGO products and it has links to other third party sites which are either unrelated to the Complainant or are competitors to the Complainant's business. The Panel finds this a blatant attempt to exploit the Complainant's trademark and is likely to create confusion in the minds of Internet users. Capitalizing on the value inherent in the Complainant's mark is sufficient to show that the registration and use of the Respondent's domain name in bad faith. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No.D2005-0556 and Tiffany (NJ) LLC, Tiffany and Company v. La Tondra Moultrie Tiffany-J,WIPO Case No. D2009-0190.
The Complainant has successfully established that the disputed domain name was registered and is being used 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 name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: June 4, 2010
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