WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. Caroline Harker Case No. D2010-0909 1. The Parties
The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services of Sweden.
The Respondent is Caroline Harker of Hollywood, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 3, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On June 4, 2010, OnlineNic, Inc. d/b/a China-C 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 June 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on July 22, 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 trademark LEGO and all other trademarks used in connection with the famous LEGO brand of construction toys and other LEGO branded products.
The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the Untied States and elsewhere.
The Complainant and its licensees, through their predecessors commenced use of the LEGO mark in the United States during 1953, to identify construction toys made and sold by them.
Over the years, the business of making and selling LEGO branded toys has grown. For instance, the revenue for the LEGO Group in 2008, was more than USD 1,8 billion.
The Complainant has subsidiaries and branches throughout the world.
LEGO products are sold in more than 130 countries including the United States.
The Complainant is also the owner of more than 1,000 domain names containing the term “Lego“.
The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets.
The LEGO Group maintains an extensive web site under the domain name 5. Parties' Contentions A. Complainant
The dominant part of the domain name comprises the word “lego”, which is identical to the registered trademark LEGO, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world.
The domain name is confusingly similar to the Complainant's world famous trademark LEGO.
The fame of the trademark has been confirmed in numerous previous UDRP decisions.
In the Complainant's view, anyone who sees the domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant.
With reference to the reputation of the trademark LEGO there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proof for each of these elements A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademark LEGO in several countries including the United States, apparently the country of domicile of the Respondent. The Complainant's trademarks are registered mainly in international class 28 for construction toys.
The disputed domain names contain the Complainant's distinctive trademark LEGO in its entirety. Neither the addition of the expression “citycom” nor the inclusion of the generic denomination “com” alters the fact that the domain name is confusingly similar to the Complainant's trademark.
In the Panel's view, the expression “citycom” has not enough impact on the overall impression of the dominant part of the domain name and therefore, does nothing to detract from the distinctiveness of the LEGO mark when appended to it in the domain name .
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark. Therefore, the requirements in paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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 or to tarnish the trademark or service mark at issue.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
In the Panel's view, the Complainant has provided evidence that the Respondent has knowingly acted so as to mislead Internet users to a web site with sponsored links without any license or authorisation granted by the Complainant.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that may be considered as evidence of the Respondent's registration and use of the domain name in bad faith:
“(i) circumstances indicating that you [e.g., Respondent] have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
“(ii) you have 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 you have engaged in a pattern of such conduct; or
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product.“
Based on uncontested evidence provided in the Complaint, in the present circumstances, it seems highly unlikely that the Respondent was not aware of the Complainant's marks at the time the disputed domain name was registered.
There is also enough force in the submission set forth by the Complainant that the fact that the Respondent failed to respond to the cease and desist letter is a recognition of both a bad faith registration and use. In the Panel's view, the failure on the part of the Respondent without good reason, to respond to a cease and desist letter is evidence of bad faith registration and use in this case.
Further, the Panel has already concluded that the Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.
Under these circumstances, the Panel finds that the Complainant has established that the Respondent has registered and is using the domain name 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.
Daniel Peña
Sole Panelist
Dated: August 5, 2010
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