WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. James Mills Case No. D2010-0562 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is James Mills of Portland, Oregon, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 14, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 14, 2010, GoD, 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 April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 10, 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 trademark upon which the Complaint is based is LEGO. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the LEGO trademark around the world, including the United States trademark registration No.1018875, registered on August 26, 1975 in international class 28 for inter alia toy building blocks. Complainant also owns other United States trademark registrations for LEGO. In addition, the Complainant is the owner of over 1000 domain names containing the term “lego”.
According to the documentary evidence and contentions submitted, the Complainant through their predecessors commenced use of the LEGO mark in the United States during 1953 to identify construction toys made and sold by them. The LEGO Group has expanded the use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The Panel accepts Complainant's contention that the LEGO trademark is a notorious trademark worldwide.
The Panel also notes that the notoriety of the LEGO trademark has been confirmed in previous WIPO UDRP decisions. See LEGO Juris A/S v. John Davies, WIPO Case No. D2010-0160; Lego Juris A/S v. Hu Liang/Dolego, WIPO Case No. D2009-0848; LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Stop2Shop, G V,WIPO Case No. D2009-0784; LEGO Juris A/S v. Private, Registration / Dohe Dot,WIPO Case No. D2009-0753; LEGO Juris A/S v. EcomMutual, WIPO Case No. D2009-0685; LEGO Juris A/S v. Reginald Hastings Jr, WIPO Case No. D2009-0680; LEGO Juris A/S v. Deng Yi Xia,WIPO Case No. D2009-0644; LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564; Lego Juris A/S v. Gioacchino Zerbo, WIPO Case No. D2009-0500; LEGO Juris A/S v. Mike Morgan,WIPO Case No. D2009-0438; LEGO Juris A/S v. Bladimir Boyiko,WIPO Case No. D2009-0437; LEGO Juris A/S v. D and Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0381; LEGO Juris A/S v. Zhijun Guo,WIPO Case No. D2009-0184; LEGO Juris A/S v. P N S Enterprises,WIPO Case No. D2009-0170; LEGO Juris A/S v. David Palmer,WIPO Case No. D2008-1826; LEGO Juris A/S v. Michael Longo, WIPO Case No. D2008-1715; and LEGO Juris A/S v. Level 5 Corp.,WIPO Case No. D2008-1692.
According to the documentary evidence and contentions submitted, the domain name was registered with on November 27, 2009. Complainant sent a cease and desist letter to Respondent on January 19, 2010, which letter was reiterated by email on February 9, 2010 and on March 10, 2010. Complainant states that no response from Respondent was ever received. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the LEGO trademark because the dominant part of the domain name is the word “lego”. Complainant also contends that the addition of the suffix “sets” is not relevant and will not have any impact on the overall impression of the dominant part of the name, “lego”, and that the top-level domain “.info” is not to be taken into consideration.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent may not claim any rights established by common usage corresponding to the domain name at issue; (ii) no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO; (iii) it is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name LEGO at the time of the registration; and (iv) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith because (i) Respondent was aware of the rights the Complainant has in the LEGO trademark at the point of the registration and registered the domain name in view of the considerable value and goodwill of that trademark; and (ii) Respondent is using the disputed domain name to intentionally attempt to attract Internet users to a commercial website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
The domain name incorporates the LEGO mark in its entirety. Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark as LEGO.
As decided in other WIPO UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. In the instant case, the combination of the word “lego” with the suffix “sets” does not affect the overall impression of the dominant part of the disputed domain name. First, because the use of a hyphen between the words “lego” and “sets” makes the LEGO trademark stand out and be better perceived by Internet users. Second, because the addition of a descriptive word linked to the products that the Complainant markets renders the domain name even more confusingly similar to the registered trade mark. The Panel agrees with Complainant's contention that, as its trademark is widely known for conducting business with brick buildings and blocks, the suffix “sets” strengthen the impression that the disputed domain name belongs to, or is affiliated with Complainant.
Also, the addition of the suffix “.info” is non-distinctive because it is required for the registration of the domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540.
Therefore, the Panel finds that the domain name is clearly confusingly similar to the LEGO trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The consensus view in the WIPO UDRP Panel decisions has been that a complainant is required to make out a prima facie case of respondent lacking rights or legitimate interests in the domain name. If the respondent fails to rebut the complainant's showing, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).
In the instant case, Complainant has established such a prima facie case. In fact, the Panel finds convincing Complainant's contentions that (i) Respondent may not claim any rights established by common usage corresponding to the domain name at issue; (ii) no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark LEGO; and (iii) it is unlikely that the Respondent would not have known of the Complainant's legal rights in the name LEGO at the time of the registration given the notoriety of the LEGO trademark.
The Panel also agrees that Respondent's use of the disputed domain name does not satisfy the test for bona fide use as established in prior WIPO UDRP Panel decisions. There are various factors that must be considered in determining whether an offering of goods is bona fide where no relationship exists between the trademark or service mark owner and the owner of the disputed domain name. Gerd Petrik v. Johnny Carpella,WIPO Case No. D2004-1043; Pfizer Inc. v. Websites,WIPO Case No. D2004-0730; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
These factors may include (a) whether complainant has acquiesced in the use of its trademark, and whether it has tacitly acquiesced through the passage of time; (b) whether the disputed domain name is the only name that respondent can use to describe its business; (c) whether there is a prominent disclaimer permitting Internet users to know the precise relationship, if any, between the registrant and the trademark owner; and (d) whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under paragraph 4(a)(iii).
The Panel has found already that Complainant has not consented to the use at issue and it is clear that the disputed domain name is not the only name that Respondent can use to describe its business. Further, the Panel agrees that the evidence and circumstances of this case indicate that the disputed domain name was registered to divert Internet users by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship or affiliation, or endorsement of Respondent's domain name. That is so because the disputed domain name resolves to a web site with logos of several of the Complainants competitors and with links to shopping sites.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(iv) of the Policy is met. D. Registered and Used in Bad Faith
The Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant when Respondent registered the disputed domain name.
In addition, paragraph 4b(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line 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, that circumstance shall be evidence of the use of a domain name in bad faith.
Given the extensive and worldwide reputation of the LEGO trademark and the publicity involving the activities of Complainant, the Panel sees no plausible explanation for Respondent's adoption and use of the term “lego” in conjunction with the term “sets” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants' trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: May 25, 2010
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