WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Online Toy Superstore Case No. D2010-0839 1. The Parties
The Complainant is LEGO Juris A/S of Billund Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Online Toy Superstore of Luton, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainPeople, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. On May 25, 2010, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name. On May 25, 2010, DomainPeople, 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 May 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2010.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on July 7, 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 in these proceedings is LEGO Juris A/S, a limited company incorporated in Denmark. This company granted a Power of Attorney to Melbourne IT Digital Brand Services AB (“MIT DBS”) “to act on behalf of the Lego Group to recover and transfer domain names incorporating the LEGO ® trademark”.
Lego Juris A/S is a well-known large corporation that manufactures, among other products, toys.
According to the non-contested allegations provided by the Complainant, the latter is the owner of the trademark LEGO and all other trademarks used in connection with the LEGO brand of construction of toys and other LEGO branded products. The Complainant and its licensees through their predecessors, commenced use of the LEGO brand in the United States of America during 1953 to identify construction toys made and sold by them. The business of making and selling LEGO branded toys has grown over the years. As an example, the Complainant has subsidiaries and branches throughout the world including the in United Kingdom, where the Respondent seems to be based and the United States of America where the Respondent's administrative contact and technical contact seem to be based. The LEGO marks, according to the non-contested evidence of the Complainant, is a famous mark.
The Panel is unaware of any information with regard to the Respondent, except that given by the Complainant and mentioned above and that the Respondent appears to be an individual with an address in the United Kingdom of Great Britain and Northern Ireland. The disputed domain name was registered on November 21, 2006. The website at the disputed domain name is currently being used to host a web page which carries a “closed for maintenance” message, although screen shots provided by the Complainant in the annexes to the Complaint indicate the Respondent's website was previously used to sell toys and other products geared toward children, both those manufactured by the Complainant and those of the Complainant's competitors. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“in the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant's request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence that it owns the rights to the trademark LEGO. The Complainant's registrations for the mark in almost all the countries of the world, including the United Kingdom and the United States, have proven this. The worldwide use of the mark reinforces this ownership. It is to be noted that several of the above marks were registered prior to the registration of the disputed domain name.
The mere fact that the Respondent has added to the LEGO mark the term “playsets” and the Gtld suffix “.com” does not affect the essence of the matter: the disputed domain name wholly incorporates the trademark LEGO, registered and owned by the Complainant and in the circumstances of this case is by itself sufficient to establish the criterion of similarity for purposes of the Policy, as many Panels have found in the past [see e.g. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070, AAA Inc v. Bladimir, Boyiko and Andrew Mikailov,WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's right to and legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) The Respondent has undertaken demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent is not using the domain name to make any bona fide offering of goods or services, but instead “to generate traffic to an online store that sells not only LEGO products but also competitive products such as e.g. Hello Kitty etc.” according to the non-contested allegations of the Complainant. The Complainant contends that this tarnishes the trademark LEGO.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the present record.
(iii) Evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: again, there is no such indication from the record.
Furthermore, it is to be noted that the Respondent does not appear to have any trademark rights over the textual string which comprises the disputed domain name, nor has it presented evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever, in any other evidence which might be demonstrative of rights and legitimate interests
As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant's argumentation aims to establish any of the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent's bad faith registration and use of the disputed domain name.
In reviewing the present case, the Panel has noted that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating likelihood of confusion with the Complainant's mark as to the source, affiliation etc. of the website. This clearly shows to the Panel that the Respondent knew, when registering the disputed domain name, of the existence of the trademark LEGO and its affiliation to the Complainant's products, and that the Respondent has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also notes the non-response of the Respondent to the Complainant's cease and desist letter, which, according to the justified syllogism of the panel in the The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915, “…reinforces the inference of bad faith registration and bad faith use”.
The bad faith of the Respondent may also be inferred through a simple logical process as well, in the sense that it would, indeed, be highly unlikely that the Respondent would come up randomly and unintentionally with a famous word, such as “lego”, and register it as it's own domain name, in combination with the term “” which directly relates to the products offered under the third party trademark.
As a consequence to the above, the Panel holds that the Respondent registered and used the disputed domain name in bad faith. 7. Decision
The Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christos A. Theodoulou
Sole Panelist
Dated: July 21, 2010
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