The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Chris Parent of Royal Oak, Michigan, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “disputed domain names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2010. On June 21, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On June 22, 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 July 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2010.
The Center appointed Daniel Peña as the sole panelist in this matter on August 11, 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 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 United States and elsewhere.
The Complainant and its licensees, through their predecessors commenced use of the LEGO mark in the United States in 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 1000 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 website under the domain name . 5. Parties’ Contentions A. Complainant
The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, according to a list of the official top 500 Superbrands for 2009/10.
The disputed domain names are confusingly similar to the Complainant’s world famous trademark LEGO, the Respondent has no rights or legitimate interests in the disputed domain names and the disputed domain names have been registered and are being used in bad faith.
The fame of the trademark LEGO has been confirmed in numerous previous UDRP decisions. 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 names transferred, the Complainant must show the following per the Policy, paragraph 4(a):
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are 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. 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 prefixes and suffixes nor the inclusion of the generic denomination “.com” alters the fact that the domain names are confusingly similar to the Complainant’s trademark.
In this Panel’s view, it has been evidenced that the expression “universe” used together with the trademark LEGO in all disputed domain names makes reference to a new product line of games on line to be launched by the Complainant. The use of the expression “universe” does not have any impact on the overall impression of the dominant part of the disputed domain names.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark. Therefore, the requirements of 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 a 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 names or a name corresponding to the domain names 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 names.
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 names, or a name corresponding to it, in connection with a bona fide offering of goods or services.
According to the evidence in this case, the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to websites that contain links that leads to sites selling LEGO products. The disputed domain names and are both connected to web sites that contain sponsored links and unauthorized use of the trademark LEGO, as well as some information about the game “LEGO universe”. The remaining two disputed domain names and are instead connected to a login page addressed to “LEGO Universe” players. By doing this, the Respondent is using without permission the LEGO trademark and misleading Internet users to commercial websites and consequently, the Respondent is tarnishing the trademark LEGO.
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 names, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has registered and used a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy, paragraph 4(b)(iv).
It has been evidenced by the Complainant that the Respondent has been contacted on April 6, 2010 through a cease and desist letter, sent by e-mail. The Complainant advised the Respondent that the unauthorized use of the LEGO trademark within the disputed domain names infringed the Complainant’s rights in said trademark. No response was received so a letter of reminder was sent on April 13, 2010. The Respondent came back and offered to sell the domain names for more than USD 2300. The Complainant informed the Respondent of LEGO’s domain name policy, as well as referring to the large amount of successfully filed UDRP complaints, and yet again asked for a voluntarily transfer of the disputed domain names. There was no reply to this communication, and neither was there a reply to the reminder sent on June 2, 2010. The Panel considers this fact as a further indication of bad faith vis-à-vis the Respondent.
Finally, in the Panel’s view, all these activities carried out by the Respondent in relation to a widely-known trademark are a clear indication of bad faith not only in the registration stage but also in the use of the disputed domain names.
The Complainant has established that the disputed domain names have been registered and are being used in bad faith. The third requirement of the Policy has therefore been fulfilled. 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 names , , , and be transferred to the Complainant.
Daniel Peña
Sole Panelist
Dated: August 25, 2010
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