WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Isidore Ventures, LLC/ WhoisGuard Protected Case No. D2010-0660 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Isidore Ventures, LLC of Wexford, Pennsylvania, United States of America. 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 27, 2010. On April 27, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On April 27, 2010, eNom transmitted by email to the Center its verification response disclosing 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 29, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 5, 2010. 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 the Respondent of the Complaint, and the proceedings commenced on May 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 28, 2010.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on June 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 Complainant is the owner of the famous trademark LEGO for construction toys and all other trademarks used in connection with it. The Complainant initiated the use of LEGO trademark in United States in 1953 and its products, sold continuously since then, are now sold in more than 140 countries. The Complainant is the owner of over 1.000 domain names containing the word LEGO. According to “Superbrands UK”, LEGO in the years 2009-2010 was the world most renowned toy brand, and number 8 in the list of the 500 most renowned brands in the world.
The Respondent has registered the disputed domain name on November 8, 2009. The website is active and contains sponsored links to LEGO products for sale. 5. Parties' Contentions A. Complainant
The Complainant contends the following: A. The disputed domain name is confusingly similar to the prior trademark of the Complainant because:
- it reproduces the words of the Complainant's trademark in its entirety;
- the adjunction of the terms “for sale” in the disputed domain name does not detract from associating it to the brand of the Complainant. B. The Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- the Complainant has never given to the Respondent any license or authorization to use LEGO trademark, nor is it an authorized dealer;
- it is unlikely that the Respondent was not aware of the Complainant's legal right on the LEGO brand at the time of the registration of the disputed domain name;
- the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but is instead using to generate traffic to its website, which contains sponsored links to LEGO items for sale. C. The domain name was registered and is being used in bad faith because:
- the Respondent could not ignore the strong notoriety and world renown of the Complainant's trademark;
- The Complainant tried to settle the matter amicably sending a cease and desist letter to the Respondent by postal mail and e-mail, without receiving any answer. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The domain name incorporates the word “lego” which constitutes the Complainant's trademark.
The addition of the words “for sale” in the domain name at issue does not render the contested domain name dissimilar to the trademark of the Complainant. Moreover, such addition does not add a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the domain name and the Complainant's trademark because the term “for sale” is indicating that the purpose of the website is precisely to sell LEGO products.
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark and only adds a generic word along with it (see, i.e., Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy,WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC.,WIPO Case No. D2005-0526).
Additionally, the Panel does not consider, when analyzing the identity or similarity, the suffix - in this case “.org” - because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, i.e., Crédit Industriel et Commercial SA v. Name Privacy,WIPO Case No. D2005-0457).
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant has trademark registrations for LEGO all over the world. Therefore it has been proven that the Complainant has rights in the LEGO trademark.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the disputed domain name, see paragraph 4(c) of the Policy.
Specifically, on the basis of the evidence filed before the Panel, the Respondent has not received any license or authorization from the Complainant to use the famous trademark LEGO, nor has it been authorized to register and use the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name is exploited by the Respondent to offer online LEGO products for sale or diverting traffic to sponsored links offering LEGO products for sale. The Respondent must have been aware of the existence of the LEGO mark and the related trademarks owned and used by the Complainant. In all likelihood, only someone who was familiar with the Complainant's mark would have registered a domain name inclusive of such mark.
The Panel is of the opinion that the Respondent has registered the disputed domain name with the intent to profit from the reputation of the famous trademark of the Complainant by using a domain name that is confusingly similar to the Complainant's mark. Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the disputed domain name has been registered and 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.
Nicoletta Colombo
Sole Panelist
Dated: June 24, 2010
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